The Trade Mark Rules 2008 - ITMA

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CASE COMMENT Background Intel, owner of a number of UK and Community trade mark registrations for computers and computer-related products consisting of, or including, the word INTEL, applied for a declaration of invalidity of CPM’s mark INTELMARK, which was registered later for marketing and telemarketing services. The facts were established by Patten J on appeal from the Trade Marks Registry: the INTEL mark had a “huge” reputation; the parties’ marks were registered for dissimilar goods and services (or dissimilar to a substantial degree); the use of INTELMARK did not suggest a trade connection between CPM and Intel; INTEL was an invented word; the INTEL mark was unique, ie not used for any other goods and services other than its own and those of CPM; and INTEL would be “brought to mind” by the average consumer when faced with CPM’s mark. The Court of Appeal (CoA) examined whether the fact that consumers “bring to mind” a well-known mark when they see a sign or subsequently registered mark was enough to CASE COMMENT It's all in the mind... Advocate-General’s opinion on trade mark infringement 34 ITMA Review Intel Corporation Inc v CPM United Kingdom Limited. Opinion of Advocate- General Sharpston Delivered on 26 June 2008 in response to a Reference to the Court of Justice for a Preliminary Ruling from the Court of Appeal (Civil Division) made on 29 May 2007 Case-252/07. This article summarises Advocate- General Sharpston's opinion delivered on 26 June 2008 on questions referred to the ECJ in the case Intel v CPM. In the AG’s opinion it is what is brought to the mind of an average consumer that is important when establishing a link between earlier and later marks. Furthermore, a ‘huge reputation’ in the goods and services for which the mark is known is not, in itself, sufficient to establish a link, unfair advantage or detriment. He also thought that an absence of similarity between the nature of goods and services of the earlier and later marks does not imply the absence of a link and that ‘uniqueness’ is not a prerequisite for establishing detriment to distinctive character. Michelle Watson logged on for the decision. preclude registration and/or use of the later mark under Articles 4(4)(a) and 5(2) of the Trade Marks Directive. Intel’s submissions were based on the “dilution” theory summarised in Adidas-Salomon v Fitness World C- 408/01 [2004] FSR 21. In Adidas- Salomon it was held that to come within the scope of Article 5(2) the mark and the sign should be similar enough that the relevant public “establishes a link” between the sign and the mark. The CoA decided to refer three questions to the ECJ. Questions referred to the ECJ By its first question the CoA asked essentially whether the facts of the case established by Patten J were sufficient in themselves to establish (i) “a link” within the meaning of Adidas- Salomon and/or (ii) unfair advantage/detriment within the meaning of Article 4(4)(a). If the answer to the first question is no, the CoA asked what factors a national court should take into account in deciding whether such facts are sufficient (specifically, what significance should be attached to the goods/services of the later mark). For its final question the CoA asked what is required in order to satisfy the condition of detriment to distinctive character: (i) does the earlier mark have to be unique; (ii) is a first conflicting use sufficient to establish detriment; and (iii) does the element of detriment require an effect on the economic behaviour of the consumer? Jacob LJ, giving the leading judgment for the CoA, gave his own opinion on the three questions. He concluded the answer to the first question should be “no” since a link requires more than such a tenuous association between the two marks if it is to entitle the trade mark owner to a monopoly in all or virtually all goods and services. In response to the second question, Jacob LJ thought the following factors should be taken into account: (a) whether, having regard to the nature of the goods and services of the later mark, an average consumer would consider there is an economic connection between the owners of the two marks; and (b) whether the distinctiveness of the earlier mark is September 2008
eally likely to be affected by the use of the later mark. Finally, in answer to the third question, Jacob LJ considered that this depended on “a realistic global appreciation of the position” taking into account a non-exhaustive list of factors, and emphasising the fact that the harm or prospect of harm must be real and tangible. Assessment AG Sharpston considered how the law should be interpreted and stated that the theory of dilution had long been the subject of disagreement and that the current US and EU legislation is criticised for not protecting highly distinctive marks rather than simply very famous marks. Dilution refers to the concept of detriment to the distinctive character of a trade mark. In contrast, the concept of detriment to the repute of a trade mark is referred to as degradation or tarnishment of the mark and is the situation in this case. AG Sharpston noted that it was not the task of the ECJ to consider the doctrine of dilution but to interpret the wording of a Community directive. In addition, it was for the ECJ to consider the interests of the public in protecting a trade mark and preventing dominant traders from abusing that protection to the detriment of others – in other words, there should be a fair balance between those interests. The AG then went on to consider the questions referred to the ECJ, questions, she felt, overlapped to a substantial degree and, taken together, asked “what is needed to establish a link in the mind of the public, an unfair advantage, detriment to distinctiveness and detriment to repute”. She concluded as follows: The fact that the earlier mark is brought to mind by the average consumer when he comes across the later mark used for the goods or services of the later mark is, in principle, the equivalent of establishing a link. CASE COMMENT If the earlier mark has a ‘huge reputation’ for certain specific types of goods or services, that those goods or services are dissimilar to the goods or services of the later mark, and that the earlier mark is unique in respect of any goods or services, is not sufficient to establish a link, unfair advantage or detriment. In order to decide whether a link, unfair advantage or detriment is established, the court must take into account all factors relevant in the case. The nature of goods or services may be relevant in determining whether there is a link, but an absence of similarity cannot be taken to imply the absence of a link. In order to establish detriment to distinctive character, the earlier mark need not be unique and an effect on the economic behaviour of the consumer is not necessary. Comment As is not uncommon in ECJ decisions, AG Sharpston has sought to restate the questions referred to the ECJ and, in answering, has not dealt with the specific questions posed by Jacob LJ. Whilst Jacob LJ considered that a link between an earlier and later mark must be more than a tenuous association and the harm suffered as a result of the association must be real and tangible, AG Sharpston has stated that the link, whilst a necessary precondition for establishing infringement, is not sufficient in itself. This however begs the question, what does she deem to be "sufficient". Similarly, whilst she suggests that any assessment of infringement should be based on all the facts of any given case, she has not provided assurance or clarity – more a reformulation of those questions referred to the ECJ. As such, we are arguably none the wiser. It remains to be seen whether the full court will agree with AG Sharpston's approach or whether the court will provide specific answers to the questions asked. Michelle Watson, Bird & Bird, michelle.watson@twobirds.com If the earlier mark has a ‘huge reputation’ for certain specific types of goods or services, that those goods or services are dissimilar to the goods or services of the later mark, and that the earlier mark is unique in respect of any goods or services, is not sufficient to establish a link, unfair advantage or detriment. September 2008 ITMA Review 35
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