Intel vs CPM: Computer says no to big brands

The European Court of Justice doesn't help well-known brands in its ruling on trade mark protection in the Intel v CPM case.

Background

Intel, the big name in computer related products, brought a claim for revocation of a trade mark registration held by CPM, for the trade mark INTELMARK and covering its marketing and telecommunications services.

The claim was brought under Section 5(3) Trade Marks Act 1994 which provides that,

"A trade mark which is identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom&hellipand the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark."

It was not disputed that Intel's INTEL trade mark enjoys a huge reputation in relation to computer goods and services, or that the INTEL and INTELMARK marks are similar but applied to very different goods and services. However, the guidance sought by the English Court in essence was whether it was enough in that context that the INTEL mark was brought to mind in the minds of the relevant public when seeing the mark INTELMARK in order for Intel to claim that CPM's mark had taken an unfair advantage or caused it detriment.

Questions for the ECJ

Accordingly, questions relating to how much protection a well-known trade mark can expect to have against "dilution" of its brand's exclusivity were referred to the ECJ by the Court of Appeal. In summary, the ECJ had to answer whether the proprietor of a really well-known, distinctive brand could gain an automatic monopoly right for its trade mark (or a similar one) in respect of any goods and services, and not just those covered by its own registration(s)?

ECJ Ruling (delivered 27th November 2008)

Firstly, the ECJ agreed with earlier case law that there needs to be some sort of "link" between the earlier trade mark with the reputation and the later mark.

This need only be a "bringing to mind" of the earlier trade mark with the reputation by the average consumer of its goods or services on seeing the later similar trade mark. This is effectively a low threshold which the national courts are to assess globally, i.e. taking into consideration all relevant factors such as the similarity between the marks, the earlier mark's distinctiveness, and the likelihood of confusion (although it is important to note that confusion between the marks is not a necessary element to prove the necessary "link").

Secondly, there must be injury to the earlier, recognised brand's mark, (by way of detriment to it, or unfair advantage being taken of it), or a serious risk that such will result.

Again, the ECJ held that the national courts are to assess this globally i.e. taking into consideration the degree of similarity between the marks, the goods and services, who the relevant public are for each brand's goods and services, the strength of the reputation of the earlier brand's trade mark, its degree of distinctiveness (inherent or acquired through use) and the existence of the likelihood of confusion between the marks (although, again, not essential).

The more immediate or strong is the "link" or "calling to mind", then the easier it will be to establish a finding of detriment or unfair advantage under the second limb.

However, an integral part of the major brand showing detriment is that where it asserts that the later mark is detrimental to the distinctive character of its mark, it must now show evidence of "a change in the economic behaviour of the average consumer of the goods for which the earlier mark is registered." In other words, it is the owner of the brand with the reputation which will have to show that its consumers are changing their economic habits in respect of its goods because of the other similar mark.

In summary

The ECJ has clearly tightened the reins on trade mark owners claiming dilution to their brand's reputation. However, whilst on the face of it, the onus is on the big brand owners to now show changes in their consumer's economic activity towards their products in order to show detriment, the ECJ did not discuss the alternative "injury" (showing that the later trade mark took an unfair advantage by "piggybacking" on the big brand's reputation) other than to say that the question must be "assessed globally".

Another reference from the Court of the Appeal to the ECJ might provide further clarity on what amounts to "unfair advantage", as this is one of the key aspects of the "smell-alike" case (L'Oreal and Others -v- Bellure and Others) due to be heard by the ECJ next year.