The Court of Justice of the European Communities (ECJ) has given its ruling this morning in Case C-252/07, Intel Corporation Inc. v CPM United Kingdom Ltd, a reference for a preliminary ruling from the Court of Appeal (England and Wales).

The facts

Intel owned the UK word mark INTEL for computers and computer-linked goods and services in Classes 9, 16, 38 and 42. The INTEL mark is accepted to have a huge reputation in the UK for microprocessor products and multimedia and business software. CPM owned the UK word mark INTELMARK for marketing and telemarketing services in Class 35. Intel sought a declaration of invalidity against the INTELMARK registration, claiming that its use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier INTEL mark.

Intel's application was dismissed by a Trade Mark Registry Hearing Officer, whose decision was affirmed by the High Court. On a further appeal by Intel to the Court of Appeal, Intel claimed that its mark would be diluted by the use of INTELMARK. Relying on the ECJ's ruling in Adidas-Salomon and Adidas Benelux, it considered that all it needed to show was that the degree of similarity between its earlier mark with a reputation and the later mark was that the relevant public would establish a link between those two marks (a ‘link’ being any kind of mental association between those two marks, so a mere bringing to mind of the earlier mark is enough). Additionally, relying on the ECJ ruling in General Motors, Intel argued that, where the earlier mark is both unique and has a strong distinctive character, detriment to it will be caused by virtually any use for any other goods or services: this is because, where the earlier mark is unique and well known, it is important to stop any encroachment at the outset if that mark is not to suffer a "death by a thousand cuts".

The reference

The Court of Appeal decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(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-Salomon and Adidas Benelux], 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) [of the Directive], 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?’

1. Article 4(4)(a) ... must be interpreted as meaning that whether there is a link, within the meaning of Case C 408/01 Adidas-Salomon and Adidas Benelux, 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.

2. The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks.

3. The fact that:
– the earlier mark has a huge reputation for certain specific types of goods or services, and
– those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, and
– the earlier mark is unique in respect of any goods or services,
does not necessarily imply that there is a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks.

4. Article 4(4)(a) of Directive 89/104 must be interpreted as meaning that whether a use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark, must be assessed globally, taking into account all factors relevant to the circumstances of the case.

5. The fact that:
– the earlier mark has a huge reputation for certain specific types of goods or services, and
– those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, and
– the earlier mark is unique in respect of any goods or services, and
– for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark to mind,
is not sufficient to establish that the use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark, within the meaning of Article 4(4)(a) of Directive 89/104.

6. Article 4(4)(a) of Directive 89/104 must be interpreted as meaning that:
– the use of the later mark may be detrimental to the distinctive character of the earlier mark with a reputation even if that mark is not unique;
– a first use of the later mark may suffice to be detrimental to the distinctive character of the earlier mark;

– 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'.