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

(Judgment Of 27 November 2008 (First Chamber)

– Case C-252/07, INTEL v. INTELMAR

First published in BARDEHLE PAGENBERG IP Report 2008-V

The judgment resulted from a reference made by the Court of

Appeal for England and Wales in an action initiated by Intel Corp.

against CPM, seeking cancellation of CPM's INTELMARK mark

registered for services in cl. 35 on the basis of Intel's

earlier INTEL marks protected for dissimilar goods. Intel claimed

to be entitled to such cancellation, because the INTEL marks were

marks with a reputation and CPM's mark, if used, would unfairly

take advantage of and be detrimental to the distinctiveness and

reputation of the INTEL marks.

The referring court sought answers to the conditions under which

the "link" between the conflicting marks could be found

to exist, as well as for the conditions required for protection to

apply under the aspect of detriment to distinctiveness.

The questions, rather complicated (as has been the case in

earlier 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 huge

reputation for certain specific types of goods or services,

those goods or services are dissimilar or dissimilar to a

substantial degree to the goods or services of the later mark,

the earlier mark is unique in respect of any goods or

services,

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?

Before analysing and answering the questions, the Court made a

series of general statements about the protection of reputation

marks, which sound indeed reasonable:

[26] Article 4(4)(a) of the Directive establishes, for the

benefit of trade marks with a reputation, a wider form of

protection than that provided for in Article 4(1). The specific

condition of that protection consists of a use of the later mark

without due cause which takes or would take unfair advantage of, or

is or would be detrimental to, the distinctive character or the

repute of the earlier mark (see, to that effect, in respect of

Article 5(2) of the Directive, Marca Mode, paragraph 36;

Adidas-Salomon and Adidas Benelux, paragraph 27, and Case C-102/07

adidas and adidas Benelux [2008] ECR I-0000, paragraph 40).

[27] The types of injury against which Article 4(4)(a) of the

Directive ensures such protection for the benefit of trade marks

with a reputation are, first, detriment to the distinctive

character of the earlier mark, secondly, detriment to the repute of

that mark and, thirdly, unfair advantage taken of the distinctive

character or the repute of that mark.

[28] Just...