ECJ makes its mark
Date: 27 February 2009
Authors: Hamish Porter, Louisa Albertini
Issue: Vol 159, Issue 7358
Categories: Features, Commercial, Competition, Data protection
In Intel v CPM United Kingdom Limited (C-252/07) the European Court of Justice (ECJ) has provided guidance on the ambit of protection for trade marks with a reputation. Under European law, owners of trade marks with a reputation can prevent or invalidate the registration of later trade marks (Arts 4(3) and 4(4)(a) Trade Marks Directive 2008/95/EEC) and take infringement action (Art 5(2)) where the later mark/infringing sign is “identical with, or similar to, an earlier…trade mark…and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark”.
The English Court of Appeal in Intel sought clarification from the ECJ of the interpretation of this provision in a case where computer-chip manufacturer and owner of the well-known Intel mark was seeking to invalidate the Intelmark trade mark registered by CPM for marketing and telemarketing services.
The ECJ had previously ruled in adidas v Fitnessworld (C-408/01) that, for protection under this provision, there must be a degree of similarity between the mark and the sign which causes the public to make a connection between the sign and the mark. The ECJ referred to this connection as a “link”. The English courts accepted that Intel has a “huge reputation”. Intel argued that the relevant section of the public would establish a link between Intel and Intelmark so that protection should automatically arise, rather than waiting for the impact to occur by which time its mark would “suffer a death by a thousand cuts”.
Both the UK Intellectual Property Office Hearing Officer and the High Court judge rejected this argument and dismissed Intel’s application. Intel appealed to the Court of Appeal, which stayed the proceedings pending guidance from the ECJ on the meaning of Art 4(4)(a).
Establishing a link
The ECJ listed certain relevant factors for assessing the existence of a link, while stressing that the presence or absence of one or more of these factors would not automatically be determinative either way. Those factors include: the similarity of the marks; the nature of the goods or services and whether their consumers overlap; the strength of the earlier mark’s reputation, particularly if the reputation of the mark goes beyond its group of usual consumers; the distinctiveness of the earlier mark, particularly if it is unique; and the existence of a likelihood of confusion, although confusion is not required for protection. The ECJ noted that a link was present in the Intel case because the average consumer would think of Intel on seeing Intelmark.
Establishing harm
While agreeing with Intel that there was a link between the two marks, the ECJ held that, in addition, the claimant must establish harm in the form of unfair advantage or detriment to the distinctive character or the repute of its earlier mark. The ECJ ruled that the existence of injury must be assessed globally, taking into account all factors relevant to the circumstances of the case, including the criteria set out above in relation to the requirement to prove a link. In particular, the stronger the link between the two marks, the greater the likelihood of proving harm. Applying this test, the ECJ noted that the factors raised in the Court of Appeal’s questions to the ECJ, namely that Intel has a huge reputation and is unique in respect of any goods and services, that the goods and services involved are dissimilar, and that Intel would be brought to mind when the average consumer encounters Intelmark, were not sufficient on their own to prove unfair advantage or detriment. The ECJ ended its judgment by ruling that, in order to prove detriment to distinctive character, it is necessary to provide evidence of change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that change will occur in the future. “Change in economic behaviour” is
not defined by the ECJ in its judgment but is likely to mean something wider than loss of sales to Intel.
Impact of the judgment
The Court of Appeal must now apply the ECJ’s decision. It is likely that Intel’s challenge to the validity of the Intelmark registration will fail because merely establishing a link between the marks is insufficient. After this judgment, owners of trade marks with a reputation now have a large evidential burden to establish the requisite damage to prove dilution of their rights.
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