The Advocate General has delivered her long-awaited opinion in the Intel Corporation Inc. v CPM United Kingdom Limited case. If it is followed by the European Court of Justice (ECJ), there will be significant implications for the English courts.
The English courts will be compelled to soften their approach to infringement and opposition cases (based on earlier conflicting marks) where there is no likelihood of confusion as to the origin of the marked goods or as to any economic link between the marked goods and the trade mark proprietor. Such infringement can be established where the mark has a reputation and the allegedly offending use of the similar/identical sign takes unfair advantage of, or is detrimental to, the mark's distinctive character or reputation.
Intel owns a number of UK and EU Community trade marks predating 1997, consisting of or including the word "INTEL" for "essentially, computers and computer linked goods and services". The UK Court of Appeal established that "INTEL" has a "huge reputation" as a trade mark, and this reputation was already acquired by 1997. The appeal court also found "INTEL" to be "an invented word with no meaning or significance beyond the products which it identifies". "INTEL" was also "unique" in that it has not been used by anyone for any goods or services other than the proprietor's own.
CPM owns the UK trade mark "INTELMARK", registered in 1997 in class 35 for "marketing and telemarketing services". Intel seeks a declaration that CPM's mark is invalid pursuant to Article 4(4)(a) of the Trade Marks Directive.
This article states that "a trade mark shall not be registered or, if registered, is liable to be declared invalid where, and to the extent that … the trade mark is identical with, or similar to, an earlier national trade mark … and is to be, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark". An almost identical infringement provision can be found at article 5(2).
Following dismissal of its application by the High Court, Intel appealed to the Court of Appeal which decided to refer questions to the ECJ. These were:
1. For the purposes of Article 4(4)(a) of [the Directive], where:
a. the earlier mark has a huge reputation for certain specific types of goods or services,
b. those goods or services are dissimilar or dissimilar to a substantial degree to the goods or services of the later mark,
c. the earlier mark is unique in respect of any goods or services,
d. 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 29 and 30 of [Adidas I] and/or (ii) unfair advantage and/or detriment within the meaning of that Article?
2. 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?
3. In the context of Article 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?
The key points of the Advocate General's opinion suggest that:
- A "bringing to mind" is all that is required to establish the "link" the ECJ talked about as necessary for article 5(2) infringement in the Addidas I case. In her view this link does not have to amount to a mistaken/confused belief in an economic association between the marked goods and the proprietor (as was suggested by Jacob LJ in the Court of Appeal). If it did this would blur the lines between the two separate types of conflicting mark oppositions / infringement actions. Article 4(4)(a) and article 5(2) do not require a "likelihood of confusion as to origin", a phrase which includes within its scope a likelihood of association (i.e. a confused belief as to an economic relationship).
- However, establishing this link is not enough in itself as it is only a "pre-condition" to establishing the effects of use of the similar mark/sign as required by these articles (i.e. unfair advantage / detriment etc). Nevertheless the factors relevant to establishing the existence of the link may also be relevant to establishing that the required effects have occurred or are likely to occur.
- A strong reputation and a uniqueness of use up until the relevant date are not in themselves enough to establish such effects but they are relevant factors in the global assessment of whether the effects have occurred or are likely to occur.
- A lack of similarity of goods will not necessarily prevent these effects from occurring. Jacob LJ had suggested it might.
- Establishing a "change in economic behaviour" of consumers as a consequence of or likely consequence of the allegedly offending use is not essential to establish the required effects. However, if it can be shown, this will "buttress" the claimant's case. For example "If the trade mark Coca-Cola, or a similar mark or sign, were used for a range of unrelated goods or services, its distinctiveness might well be lessened, but people might drink the beverage in undiminished quantities".
- "Any boosting or enhancing effect on the later mark as a result of the existence of the earlier mark" would appear to amount to taking "unfair advantage of..." it. This part of the Advocate General's opinion is not altogether clear and we are unlikely to get further guidance on whether there can ever be "fair" free-riding until the ECJ answers the questions sent to it in the L'Oreal look-a-like perfume bottles case.
- Although a very "first" offending use will not itself lead to erosion of distinctive character – "the point of both Article 4(4)(a) and Article 5(2) is to prevent or pre-empt repeated conflicting use which would dilute, whittle away, disperse, lessen, water down, debilitate, weaken, undermine, blur, erode or insidiously gnaw away at the earlier mark, in particular its distinctive character. A first use cannot produce such an effect on its own, but the likelihood of its being caused by repeated use – which is, after all, the norm with trade marks – may be extrapolated from the circumstances of the use".