Intel Corporation Inc v CPM United Kingdom Ltd  EWCA Civ 431 – UK Court of Appeal refers to the ECJ, three questions on the interpretation of "dilution" provisions of the Trade Mark Directive (89/104).
On Tuesday 15 May 2007, the UK Court of Appeal handed down judgment in the latest stage of the trade mark dispute between Intel Corporation Inc ("Intel") and CPM United Kingdom Ltd ("CPM"). The case concerned how Article 4(4)(a) and 5(2) of the European Trade Mark Directive (89/104) are to be interpreted regarding refusal of registration and infringement where the earlier trade mark has a reputation. Giving the lead judgment of the Court of Appeal, Lord Justice Jacob has referred three questions to the European Court of Justice ("ECJ"), whilst offering his own view of what the answers should be.
Intel owns a number of UK and Community trade marks for the marks INTEL and INTEL INSIDE for computers and linked products. CPM applied, and was granted, registration for the mark INTELMARK for marketing and telemarketing services. Intel sought a declaration of invalidity against CPM's registration, on the basis that CPM's use of its later mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of Intel's earlier mark.
The hearing officer dismissed Intel's application because he was not satisfied that there would be any material damage to the distinctiveness or repute of the INTEL brand if INTELMARK was used in a normal and fair manner in relation to the services for which it was registered. Patten J. in the High Court dismissed Intel's appeal against the earlier decision but said that "the reputation enjoyed by the INTEL mark would be sufficient for the average consumer to focus on INTEL in INTELMARK at least so as to bring to mind the INTEL mark." Intel was granted permission to appeal to the Court of Appeal.
The issue in this case turns on the interpretation of the tests in the Trade Mark Directive (89/104) for refusal of registration (Article 4(4)(a)) and infringement, (Article 5(2)) where the earlier trade mark has a reputation.
Intel relied on the theory of dilution as summarised in Adidas–Salomon v Fitness World Case C-408/01,  ECR I-12537. It was said in that case that to establish infringement "it is sufficient for the degree of similarity between the mark with a reputation and the [later] sign to have the effect that the relevant section of the public establishes a link between the sign and the mark". Intel argued that "a link" meant any kind of mental association between the later sign and the earlier mark and, therefore, "bringing to mind" of the earlier mark was enough. Intel also submitted that where, as here, the earlier mark was both unique and had a strong distinctive character, it should be accepted that detriment to the mark will be caused by its use for virtually any other goods or services.
The Questions referred to the ECJ:
After considering the arguments, Jacob L.J. concluded that the extent of Articles 5(2) and 4(4)(a) "calls for further consideration by the Court" and formulated three questions to be put before the ECJ. They are:
For the purposes of Art. 4(4)(a) of the First Council Directive 89/104 of 21st December 1988, where:
the earlier mark has a huge reputation for certain specific types of goods or services,
those goods or services are dissimilar or dissimilar to a substantial degree to the goods or services of the later mark,
the earlier mark is unique in respect of any goods or services,
the earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the services of the later mark,
are those facts sufficient in themselves to establish (i) "a link" within the meaning of paragraphs  &  of Adidas-Salomon AG v. Fitnessworld Trading Ltd, Case C-408/01,  ECR I-12537 and/or (ii) unfair advantage and/or detriment within the meaning of that Article?
If no, what factors is the national court to take into account in deciding whether such is sufficient? Specifically, in the global appreciation to determine whether there is a "link", what significance is to be attached to the goods or services in the specification of the later mark?
In the context of Art. 4(4)(a), what is required in order to satisfy the condition of detriment to distinctive character? Specifically, (i) does the earlier mark have to be unique, (ii) is a first conflicting use sufficient to establish detriment to distinctive character and (iii) does the element of detriment to distinctive character of the earlier mark require an effect on the economic behaviour of the consumer? Jacob L.J. went on to give his own opinion on the questions referred. With regard to question 1, his answer was "no". His view was that a "link" required more than an association between the two marks. He also came to the same decision by stating that in Articles 4(4)(a) and 5(2) when reference was made to "detrimental to the distinctive character or repute of the earlier trade mark" it meant only the distinctive character or repute of the earlier mark "for the goods or services for which the mark is registered". (emphasis added)
In answer to question 2, the factors which Jacob L.J. thought should be taken into account were:
Whether, having regard to the nature of the goods or services for which the later mark is used, the average consumer would consider that there is an economic connection between the owners of the two marks.
- Whether the distinctiveness or repute of the earlier mark for the goods or services for which it is registered is really likely to be affected if the later mark is used for the specific goods or services covered by its registration.
Finally, in answer to question 3, he stated a non-exclusive list of factors that should be considered including:
- whether the "pulling power" of the earlier mark for its specific goods or services is really likely to be affected by the use of the later mark for its specific goods or services
- whether the user of the later mark is likely to get a real commercial advantage from its use for its specific goods or services by reason of the repute of the earlier mark for its specific goods or services.
Jacob L.J. concluded that "it is very important that the harm or prospect of harm must be real and tangible. A mere possibility or assertion of damage is just too remote and would leave trade mark owners in too monopolistic a position."
Jacob L.J. noted that if Intel's registrations for dissimilar goods did preclude use of INTELMARK for CPM's dissimilar services, then it would be "difficult to think of any goods or services which are not protected by the registrations: the same "dilution" argument would apply as much to use of INTEL for nuclear power stations or bananas as it does to marketing services." The learned Lord Justice plainly believes such a result would be wholly wrong. It will be very interesting to see whether the ECJ follow Jacob L.J.'s reasoning and answer his questions in the same way.