How far can reputation extend registered trade mark rights in the UK?

Introduction

In a recent case Intel, a well-known computer chip manufacturer, had sought a declaration of invalidity in respect of a UK registered mark owned by CPM United Kingdom Limited (CPM) in order to clear the way for a trade mark infringement action. The case has recently reached the Court of Appeal[1], which court has referred a series of questions to the European Court of Justice (ECJ). Depending on how the ECJ answers these questions, registered trade marks enjoying big reputations could become unprecedentedly powerful.

Background

2.1 Intel has a number of UK and Community trade mark registrations consisting of or including the word “Intel” in respect of goods or services in classes 9, 16, 38 and 42 — essentially computer linked goods or services. The Intel mark is unique in the sense that it has not been used by anyone else for any goods or services. The company also was said to have possessed and to still possess a huge reputation.

CPM has a UK registered trade mark consisting of the word “Intelmark”, which was coined as being short for Integrated Telephone Marketing, and which has been registered in class 35 for “marketing and telemarketing services” with effect from 31 January 1997.

Previously, a judge (in the High Court) had found that “the reputation enjoyed by the INTEL mark would be sufficient for the average consumer to focus on INTEL in INTELMARK so as to bring to mind the INTEL mark”. Thus, two issues faced the Court of Appeal: (i) whether a mere “bringing to mind” of an earlier mark with a reputation is enough to prevent a later registration; and (ii) whether it is an infringement of a registered mark which has a reputation if a defendant uses, for dissimilar goods or services, a mark which merely “brings to mind” the registered mark.

The Legislation

The Court turned to the key legislation — the Trade Marks Directive[2], which is implemented in the United Kingdom by the Trade Marks Act 1994. In particular, Article 4(4)(a) of the Directive reads (emphasis added):

Any Member State may furthermore provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where, and to the extent that:

a. the trade mark is identical with, or similar to, an earlier national trade mark within the meaning of paragraph 2 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;

The infringement provisions of Article 5(2) of the Directive contain the same language.

Thus, the question can be reframed as whether Intel’s registrations for certain goods preclude use of INTELMARK for CPM’s dissimilar services. If so, as the court acknowledged, it would be difficult to think of any goods or services not protected by Intel’s registrations, irrespective of those specified in the registration. In other words, by virtue of Intel’s reputation, its registered trade mark rights would extend far beyond the bounds of its registration.

Submissions to the Court

In its submissions to the Court, Intel based its arguments on the “dilution” theory, as summarized by Advocate-General Jacobs in Adidas -v- Fitness World[3] (Adidas). In Adidas the ECJ said (emphasis added):

“…the protection conferred by Article 5(2) of the Directive is not conditional on a finding of a degree of similarity between the mark with a reputation and the sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.

However, in contrast to the present case before the Court of Appeal, in Adidas the defendants’ goods were identical to those covered by the specification of goods of the registered mark.

In addition, it is by no means apparent that CPM’s use of INTELMARK for “marketing and telemarketing services” would take unfair advantage of or be detrimental to the distinctive character or the repute of Intel’s registered trade mark(s), regardless of the extent of Intel’s reputation.

Questions for the ECJ

Nevertheless, the Court of Appeal felt that the extent of Article 5(2) and 4(4)(a) of the Directive merited further consideration by the ECJ and remitted the following questions:

(i) For the purposes of Art. 4(4)(a) of the First Council Directive 89/104 of 21st December 1988, 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] & [30] of Adidas-Salomon AG v. Fitnessworld Trading Ltd, Case C-408/01, [2003] ECR I-12537 and/or (ii) unfair advantage and/or detriment within the meaning of that Article?

(ii) 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?

(iii) In the context of Art. 4(4)(a), what is required in order to satisfy the condition of detriment to distinctive character? Specifically, does (i) 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?

Answering the questions

The Court of Appeal, in the judgement of Jacob LJ, went on to give its opinion as to how it would answer these questions, answering the first question in the negative and stating a number of cautionary factors to be considered in respect of the second and third, generally urging against placing trade mark owners in too strong a monopolistic a position.

While it may disappoint big brand owners enjoying large reputations, this position would appear to be well justified. Were the ECJ to hold otherwise, then the power and scope of certain trade marks would be radically enhanced. Such an unprecedented extension, i.e. to dissimilar marks in respect of dissimilar goods or services, would surely be unwarranted and incompatible with the raison d’tre of trade mark law, which in the words of Mummery LJ “is there to protect a proper system of competition, not to provide trade mark owners with overreaching rights which may obstruct trade.”[4]

[1] Intel Corporation Inc. -v- CPM United Kingdom Limited [2007] EWCA Civ 431

[2] First Council Directive 89/104 of 21 December 1988

[3] Adidas-Salomon AG -v- Fitness World Case C-408/01 [2004] FSR 21

[4] Paragraph 37 Intel Corporation Inc. -v- CPM United Kingdom Limited [2007] EWCA Civ 431


For further information or if you have any specific questions, please contact Jon Broughton at HLBBshaw in Epping, Essex, UK. E-mail: jon.broughton@hlbbshaw.com. Visit the website at www.hlbbshaw.com.

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 

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