In a reference from the UK Court of Appeal concerning trademark dilution, the European Court of Justice (ECJ) held that the issue of whether there is a link between an earlier mark with a reputation (i.e., a “famous mark”) and a later mark is one to be assessed globally, taking into account all relevant circumstances.  Here, despite the fact that the mark in issue, Intel, enjoyed a huge reputation for certain types of goods and services, albeit dissimilar to the goods and services of the later mark, and is unique, these facts were found by the ECJ to be not sufficient to establish that there was a link between the marks or unfair advantage or detriment to the earlier mark.  Rather, the ECJ held that in order to prove that use of the later mark was detrimental to the distinctive character of the earlier mark, it was necessary to evidence a change in the economic behavior of consumers of goods and services for which the earlier mark was registered. Intel Corp. v. CPM UK Limited, Case No. C-252/07 (ECJ, Nov. 27, 2008).

Intel Corporation is the proprietor of various UK and European Community trademarks consisting of or incorporating the word INTEL, broadly covering computers and computer-linked goods in Classes 9, 16, 38 and 42.   CPM is the proprietor of a UK registration for INTELMARK for “marketing and telemarketing services” in Class 35.  In 2003, Intel brought an action for a declaration of invalidity against the registration of INTELMARK, arguing that use of that mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the INTEL trademark.  The Trademarks Registry and the High Court dismissed the application.  The Court of Appeal considered that the mark INTEL was unique and that the marks INTEL and INTELMARK were similar, but found that the goods and services for which INTEL was registered were dissimilar to those for which INTELMARK was registered.  However, the Court of Appeal was uncertain as to whether, on such facts, the proprietor of the earlier mark having a reputation was entitled to the protection provided by Article 4(4)(a) of the Trademarks Directive (89/104/EEC) and stayed the proceedings pending a reference to the ECJ. 

The ECJ held that whether there is a link between an earlier mark with a reputation and a later mark had to be assessed globally, taking into account all relevant circumstances of the case. The ECJ set out relevant factors in establishing a link between an earlier mark with a reputation and a later mark, including the similarity between the marks, the nature of the respective goods or services, whether the customers overlapped, the strength of the earlier mark’s reputation, the degree to which it was unique and the existence of the likelihood of confusion.  Given the circumstances that a mark had a huge reputation for certain types of goods and services, that those goods or services were dissimilar to the goods and services of the later mark and that the earlier mark is unique, the Court found these were not sufficient circumstances to establish a link between the conflicting marks or unfair advantage or detriment to the earlier mark.  However, the existence of such a link may be implied where the later mark is found to call the earlier mark to the mind of consumers.

The ECJ found that the stronger the link between two marks, the greater the likelihood of finding unfair advantage or detriment.  In addition to proving a link between two marks, the owner of the earlier mark must establish that there was either injury or a serious risk that injury would occur in the future. Where this is proven, the burden would then shift to owner of the later mark to establish good cause for using the mark. 

To prove that use of the later mark was detrimental to the distinctive character of the earlier mark with a reputation, the earlier mark did not have to be unique, i.e., there could be one or more later users.  However, a first conflicting use could be sufficient to give rise to a detriment. 

Practice Note:   Whilst in some respects the ECJ’s judgment has clarified the grounds for dilution, it has in other respects complicated matters by adding a requirement that the owner of an earlier mark has to show an effect on the economic behavior of consumers to establish detriment to the distinctive character of its mark without providing guidance on the types of evidence required.