European Court of Justice: On tThe 'Link' Between Marks With A Reputation In Case Of Conflict: Unfair Detriment To Distinctiveness

Author:Dr. Dr. Alexander von Mühlendahl
Profession:Bardehle Pagenberg Dost Altenburg Geissler

(Judgment Of 27 November 2008 (First Chamber)– Case C-252/07, INTEL v. INTELMARFirst published in BARDEHLE PAGENBERG IP Report 2008-VThe judgment resulted from a reference made by the Court ofAppeal for England and Wales in an action initiated by Intel Corp.against CPM, seeking cancellation of CPM's INTELMARK markregistered for services in cl. 35 on the basis of Intel'searlier INTEL marks protected for dissimilar goods. Intel claimedto be entitled to such cancellation, because the INTEL marks weremarks with a reputation and CPM's mark, if used, would unfairlytake advantage of and be detrimental to the distinctiveness andreputation of the INTEL marks.The referring court sought answers to the conditions under whichthe "link" between the conflicting marks could be foundto exist, as well as for the conditions required for protection toapply under the aspect of detriment to distinctiveness.The questions, rather complicated (as has been the case inearlier references from the same court), were the following:(1) For the purposes of Article 4(4)of the [Directive], where: (a) the earlier mark has a hugereputation for certain specific types of goods or services,those goods or services are dissimilar or dissimilar to asubstantial degree to the goods or services of the later mark,the earlier mark is unique in respect of any goods orservices,the earlier mark would be brought to mind by the averageconsumer when he or she encounters the later mark used for theservices 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 advantageand/or detriment within the meaning of that Article?(2) If no, what factors is the national court to take intoaccount in deciding whether such is sufficient? Specifically, inthe global appreciation to determine whether there is a"link", what significance is to be attached to the goodsor services in the specification of the later mark?(3) In the context of Article 4(4)(a) [of the Directive], whatis required in order to satisfy the condition of detriment todistinctive character? Specifically, (i) does the earlier mark haveto be unique, (ii) is a first conflicting use sufficient toestablish detriment to distinctive character and (iii) does theelement of detriment to distinctive character of the earlier markrequire an effect on the economic behaviour of the consumer?Before analysing and answering the questions, the Court made aseries of general statements about the protection of reputationmarks, which sound indeed reasonable:[26] Article 4(4)(a) of the Directive establishes, for thebenefit of trade marks with a reputation, a wider form ofprotection than that provided for in Article 4(1). The specificcondition of that protection consists of a use of the later markwithout due cause which takes or would take unfair advantage of, oris or would be detrimental to, the...

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