European Union: 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)

  1. of the [Directive], where: (a) the earlier mark has a huge reputation for certain specific types of goods or services,
  2. those goods or services are dissimilar or dissimilar to a substantial degree to the goods or services of the later mark,
  3. the earlier mark is unique in respect of any goods or services,
  4. 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 one of those three types of injury suffices for that provision to apply.

[29] As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment is caused when that mark's ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.

[30] The types of injury referred to in Article 4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see, in relation to Article 5(2) of the Directive, General Motors, paragraph 23; Adidas-Salomon and Adidas Benelux, paragraph 29, and adidas and adidas Benelux, paragraph 41).

[31] In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

[32] However, the existence of such a link is not sufficient, in itself, to establish that there is one of the types of injury referred to in Article 4(4)(a) of the Directive, which constitute, as was stated in paragraph 26 of this judgment, the specific condition of the protection of trade marks with a reputation laid down by that provision.

The relevant public

[33] The public to be taken into account in order to determine whether registration of the later mark may be declared invalid pursuant to Article 4(4)(a) of the Directive varies depending on the type of injury alleged by the proprietor of the earlier trade mark.

[34] First, both a trade mark's distinctiveness and its reputation must be assessed, first, by reference to the perception of the relevant public, which consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (as regards distinctive character, see Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 34; as regards reputation, see, to that effect, General Motors, paragraph 24).

[35] Accordingly, the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect.

[36] Secondly, as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

Proof

[37] In order to benefit from the protection introduced by Article 4(4)(a) of the Directive, the proprietor of the earlier mark must adduce proof that the use of the later mark 'would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark'.

[38] The proprietor of the earlier trade mark is not required, for that purpose, to demonstrate actual and present injury to its mark for the purposes of Article 4(4)(a) of the Directive. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future.

[39] When the proprietor of the earlier mark has shown that there is either actual and present injury to its mark for the purposes of Article 4(4)(a) of the Directive or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark.

Among the interesting aspects of this analysis is, first, that the Court distinguishes between the relevant public, which with regard to detriment to distinctiveness or reputation is the public to which the earlier mark is addressed, while with regard to the taking advantage of the distinctiveness and reputation it is the public to which the later mark is addressed (these may indeed be different) and, second, that the claimant must prove either actual injury or a serious risk that injury to the earlier mark will occur. The Court analysed the questions referred first under the aspect of the "link", giving the following answers:

[62] The answer to point (i) of Question 1 and to Question 2 must therefore be that Article 4(4)(a) of the Directive must be interpreted as meaning that whether there is a link, within the meaning of 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.

[63] 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.

[64] 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.

The Court then turned to the conditions of protection against detriment to distinctiveness, giving the following answers:

[79] The answer to point (ii) of Question 1 and to Question 3 must therefore be that Article 4(4)(a) of the Directive is to 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.

[80] 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 the Directive.

[81] Article 4(4)(a) of the Directive 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.

The judgment contains a helpful series of statements relating to the circumstances to be taken into account when seeking to establish the required "link", as well as the circumstances relevant for finding detriment.

Commentators may argue and disagree about whether the judgment actually favours Intel or CPM. In view of the declared reluctance of the referring court to accept the broad scope of protection that the Directive allows for marks with a reputation, it may well be that in the end Intel may not succeed. Let's wait and see (or read).

© BARDEHLE PAGENBERG; 2008

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