For many years European national Courts have wrestled with the concept of how broad the protection should be for registered trade marks with a reputation.
A much anticipated decision was handed down on 27 November 2008 by the European Court of Justice (ECJ) providing the most comprehensive guidance on this to date.
The English Court of Appeal had referred several questions to the ECJ regarding the factors necessary to establish whether a later trade mark had taken unfair advantage of or was detrimental to the distinctive character or repute of an earlier trade mark for the purposes of Article 4(4)(a) of the Trade Marks Directive (the "Directive"). The ECJ held that the unique character and huge reputation of a mark like INTEL does not on its own prove the required "link" in the minds of the public between the earlier mark and a later mark, nor that the later mark has taken unfair advantage of or been detrimental to the earlier mark. The ECJ provided useful guidance on the factors to be taken into account in assessing when there is a "link" and what amounts to unfair advantage and detriment.
Intel Corporation (Intel) is the owner of various national and Community trade marks incorporating the word INTEL, including a UK trade mark registration for the word mark INTEL for, essentially, computers and computer-linked goods and services. The INTEL mark has a huge reputation in the UK for microprocessor products and multimedia and business software.
CPM United Kingdom Ltd is the owner of a UK trade mark registration for the word mark INTELMARK, registered with effect from 31 January 1997 for 'marketing and telemarketing services' in Class 35.
On 31 October 2003 Intel filed at the UK Trade Mark Registry an application for a declaration of invalidity against the registration of the INTELMARK trade mark, claiming that the use of that mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier INTEL trade mark within the meaning of section 5(3) of Trade Marks Act 1994 (the UK implementation of Article 4(4) (a) of the Directive).
Intel's application failed, as did its subsequent appeal to the High Court. Intel then appealed to the Court of Appeal, arguing that both Article 4(4) (a) and Article 5(2) of the Trade Marks Directive seek to protect a proprietor of a trade mark with a reputation against the risk of dilution. It argued that the mere "bringing to mind" of the earlier mark was sufficient to establish a "link" between the earlier and later marks, thus resulting in the invalidity of the later mark. The Court of Appeal referred several questions to the ECJ regarding the factors necessary to establish whether a later trade mark had taken unfair advantage of or was detrimental to the distinctive character or repute of an earlier trade mark for the purposes of Article 4(4) (a).
Detriment to distinctive character – what does this mean?
The ECJ held that detriment to the distinctive character of the earlier mark (which it noted was also referred to as dilution or blurring) is caused when that mark's ability to identify goods or services as coming from the proprietor of that mark is weakened.
Is the public required to make a connection or "link" between the earlier and later marks?
If the relevant section of the public has not made a "link" between the earlier and later marks, the use of the later mark is unlikely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. However, the existence of the link, in itself, is not sufficient to establish the required injury under Article 4(4).
Who is the relevant public?
The "relevant public" depends on the type of injury alleged:
- For the purpose of establishing detriment to the distinctive character or repute of the earlier mark it is the average consumers of the goods and services for which the earlier mark is registered;
- For the purpose of establishing unfair advantage, it is the average consumers of the goods or services for which the later mark is registered.
The owner of the earlier mark must prove that there is either 1) an actual and present injury or 2) a serious risk of such injury.
Establishing a link between the earlier and later marks
Whether there is a link between the earlier mark with a reputation, and the later mark must be assessed globally, taking into account all factors relevant to the circumstances of the case. Factors to be considered include:
- the degree of similarity between the conflicting marks; the more similar the marks, the more likely that there will be a link established;
- the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
- the strength of the reputation of the earlier mark; for example, if it extends beyond the relevant public for the goods and services for which it was registered, a link may be more likely to be established;
- the degree of the distinctive character of the earlier mark (whether inherent or acquired through use); the stronger the distinctive character, the more likely that there will be a link established; and
- the existence of the likelihood of confusion on the part of the public (although the ECJ noted that the Directive does not require likelihood of confusion).
- The fact that, for the average consumer, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link between the conflicting marks.
Criteria for establishing unfair advantage and/or detriment
The existence of unfair advantage or detriment or a serious likelihood that those will occur in the future must be assessed globally, taking into account all factors relevant to the circumstances of the case. Even if there is a link between the earlier mark and the later mark in the mind of the consumer, the trade mark owner must still show actual and present injury or a serious likelihood of injury.
What is required in order to satisfy the condition of "detriment to distinctive character"?
Proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a 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 such a change will occur in the future. It remains to be seen what kind of evidence will satisfy this criteria.