On 15 May the Court of Appeal in Intel Corp Inc v CPM United Kingdom Limited  referred a number of questions to the European Court of Justice (ECJ) that are of crucial importance to owners of well known European brands. It sought detailed guidance as to the exact meaning and scope of what are sometimes referred to as the ‘anti-dilution’ provisions in the Trade Mark Directive (EEC 89/104). In doing so, the Court of Appeal also gave its own relatively restrictive view as to the correct manner in which these provisions should operate.
The facts in Intel Corp Inc v CPM United Kingdom Ltd
CPM United Kingdom Ltd (CPM) had sought to register the word ‘INTELMARK’ in class 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks for ‘marketing and telemarketing services’. That application had been opposed by Intel Corp Inc (Intel). Intel owned a large number of United Kingdom and Community trade mark registrations in relation to computers and computer linked goods and services either consisting of or including the word ‘INTEL’.
By the time the case reached the Court of Appeal, Intel had abandoned a claim that the use of INTELMARK for marketing and telemarketing services would amount to passing off. Therefore, the case proceeded on the basis that the use of INTELMARK did not suggest a trade connection with Intel Corp. However, the Court of Appeal accepted that (i) there was a ‘huge reputation’ in the word INTEL for micro-processor products; (ii) INTEL was not used by any one for any goods or services other than those of Intel Corp; (iii) INTEL was ‘an invented word with no meaning or significance beyond the products which it identifie[d]’; and (iv) the reputation of the mark was such that the average consumer would ‘focus on INTEL in INTELMARK at least so as to bring to mind the INTEL mark’.
The question in this case was whether CPM’s registration in these circumstances was contrary to art 4(4)(a) of the directive. However, since the wording of art 4(4)(a) is mirrored in art 5(2) of the directive, the test was the same as that in infringement proceedings. So, the real question was ‘whether Intel’s registration for dissimilar goods preclude[d] use of Intelmark for CPM’s dissimilar services’.
The ECJ in Adidas-Salomon AG v Fitnessworld Trading Ltd Case C-408/01  IP & T 219,  Ch 120, had stated that it was a requirement in such a case that the public ‘establishes a link’ between the two marks. However, the exact nature of that link was not explained.
The questions put to the ECJ
The questions put to the ECJ and the answers suggested by Jacob LJ were as follows.
Whether the circumstances of this case were sufficient to establish ‘a link’ within the meaning of the Adidas-Salomon case and/or unfair advantage and/or detriment within the meaning of art 4(4)(a)?
Jacob LJ thought the answer was ‘No’. In his opinion a ‘link’ required more than such an association between two marks. They needed to cause the consumer to think there was a trade connection between the owner of the full mark and the user of the latter or at least to wonder whether there was such a connection. Alternatively, the same result could be achieved by a correct interpretation of the requirement in art 4(4)(a) that the use must be ‘detrimental to the distinctive character or repute of the earlier trademark.’ Only if there is harm to the distinctiveness of the mark for the goods or services for which it was registered should art 4(4)(a) come into play.
If not, 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 Jacob LJ’s view the factors were:
- whether having regard to the nature of the goods or services for which the latter 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 latter mark is used for the specific goods or services covered by its registration;
- What is required in order to satisfy the condition of detriment to distinctive character?
According to Jacob LJ at least the following non exhaustive list of factors should be considered:
- whether the ‘pulling power’ of the earlier mark is really likely to be affected;
- 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;
- whether, if the earlier mark is unique, it really matters that it is used for the dissimilar goods or services;
- where the latter mark is not the same as the earlier mark what difference that will make on the average consumer and in particular whether there is ‘merely a calling to mind of the earlier mark’;
- whether the economic behaviour of the average consumer in relation to the earlier mark is likely to be affected;
how inherently distinctive the earlier mark is; and
- how strong the reputation of the earlier mark for its goods or services is.
The questions raised in this case are of significant importance. A wide interpretation of the scope of art 5(2) of the directive would provide trade mark owners with a very powerful weapon against those who use marks that are similar to their own, even if no customer confusion has resulted from that use.
It is remarkable how little guidance has been provided to date by the ECJ on the ‘anti-dilution’ provisions to be found in European trade mark law. Whilst in Davidoff & Cie SA v Gofkid Ltd Case 292/00  IP & T 128,  All ER (EC) 1029 the ECJ controversially ignored the advice of its Advocate General and extended the scope of those provisions to cover use on similar goods and services, it is otherwise far from clear what sorts of activities fall within their ambit.
Clearly, the view of the English Court of Appeal is that these provisions should be interpreted relatively restrictively. In the opinion of Jacob LJ: ‘Sometimes ... trade mark owners of big brands want more protection than they really need.’ He is obviously of the view that a wide interpretation is not necessary. That the English Court of Appeal adopted this stance is unsurprising given its views on the scope of other aspects of the directive. However, ultimately it is the views of the ECJ that matter. Brand owners will follow how developments in this case with great interest.
This case review appears in Butterworths’ Intellectual Property and Technology online service, June 2007.