Community’s research project names regarding trademark law: who bears the risks?

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Publié le 29 octobre 2007
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Pursuant to the provisions of Title XVIII of the EC Treaty, the Community has the objective to strengthen the scientific and technological bases of industry and to encourage it to become more competitive at international level. Concretely, the European Commission, in charge of the implementation of these provisions, funds industrial private companies in charge to…

Pursuant to the provisions of Title XVIII of the EC Treaty, the Community has the objective to strengthen the scientific and technological bases of industry and to encourage it to become more competitive at international level. Concretely, the European Commission, in charge of the implementation of these provisions, funds industrial private companies in charge to carry out specific research projects in different areas such as nanotechnologies, embedded computing systems, etc.

 

These projects are as a rule denominated by a name chosen by the European Commission. As sole owners of intellectual property rights generated by the projects, the companies usually use the results for commercial purposes under the project label. According to multiple factors, these project names can interfere with prior third parties’ trademark rights. In these circumstances, can the Commission be regarded as infringing trademark law?

 

For the Commission, these risks are threatening in two ways: firstly by the direct use of the project name made by the Commission itself. Secondly, the Commission’s behaviour could be regarded as an incitement to infringe third parties’ trademark rights. It therefore could be liable for the use made of a project name by its partners.

 

This issue has been settled by the European Court of First Instance in a judgment dated on 10 May 2006 (T-279/03 [Eur-Lex]) in the Galileo case. Several companies owning trademark rights on the word « Galileo » have filed a claim against the Commission before the European Court of First Instance. The Commission was using this word to name its public-private partnership project for Global Navigation Satellite System. For the applicants, this use was infringing their prior trademark rights, arguing in the line of the above-mentioned background. The Court of First Instance rejected the claim. The European Court of Justice confirmed this position in an order dated on 20 March 2007.

 

The use of a denomination or a sign by a European institution is not related to commercial purposes and thus does not enter in the course of the trade. It therefore cannot infringe third parties’ trademark rights. The Court of First Instance reminds that the trademark protection is effective only if the use of a sign enters in the course of the trade (Article 9. §1. b Council Regulation # 40/94, as well as Article 5. §1. b Council Directive # 89/104). For judges, such a use in the course of the trade means a use made in the context of a commercial activity with the aim to obtain an economic advantage. This statement is more comprehensive than an offer of goods or services. It is clear that the Commission does not offer goods or services on the trade. In this broader scope of a « commercial activity« , magistrates then observe that the Commission only uses the word « Galileo » in the framework of research and endorsement aspect of the project. Even if the project has some commercial perspectives, Commission’s own role here is purely to supervise and to control its development but not to carry any commercial activity. The Court finally concludes that the Commission does not infringe applicant’s trademark rights.

 

The Commission is neither liable for the independent use of its project name made by its private partners, even for commercial purposes, as this remains under the latter’s discretional power. The Commission’s contribution to the eventual damage incurred by prior trademark rights owners is indeed too farther to make it liable. As a traditional solution, only a direct link from behaviour to damage incurred by a third party is able to make its author responsible. Furthermore, the private companies located at the end of the damage chain have no obligation to use the project name for commercial purposes. They use it in total freedom for obvious popularity reasons. This discretional faculty precisely breaks the responsibility chain towards the Commission. Commission’s partners are thus sole actors to be liable. The Court of First Instance classically reminds that the European Commission cannot bear responsibility for its private partners’ deeds. These latter are liable for their own behaviour in the course of the trade.

 

The Commission is fully protected from infringements of third parties’ trademark rights for the choice and use of research project names. It does not seem to be the case for its private partners involved in the course of the trade. In the view to guarantee an unthreatening use of project names for its partners, Commission’s policy is to register them as trademarks as much as possible, according to their relevance and their potential to be disclosed to the public.

 

Xavier Jorelle

Legal Officer