UK: European Court Of Justice Hands Down Long Awaited Decision In Trade Marks Dilution Case

Last Updated: 10 December 2008
Article by Anastasia Fowle and Ron Moscona

Trade marks with a reputation enjoy an extended form of protection in the European Union. Under EU legislation, special protection is afforded to a reputable registered mark where the use of another similar or identical mark "without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the [reputable trade mark]". This test provides grounds for infringement actions and for challenges against the registration of a later mark (see Article 4(4)(a) and Article 5(5) of Directive 89/104/EEC to approximate the laws of Member States relating to trade marks (the "Directive") and equivalent provisions in Article 8(5) and Article 9(1)(c) of Regulation 40/94/EEC on the Community trade mark).

As confirmed in previous case law of the European Court of Justice ("ECJ"), unlike the protection available to trade marks generally (whether reputable or not), this extended form of protection is available whether the later mark is used in relation to goods or services similar to those for which the reputable mark is registered, or in relation to dissimilar goods or services, and there is no requirement to show likelihood of confusion. In its ruling of 27 November 2008 in the Intel Corp Inc. v. CPM United Kingdom Ltd. case (case C-252/07) the Court provides much needed guidance on the question in what circumstances in practice should the use of a later mark be deemed to be 'taking unfair advantage', or to be 'detrimental to the distinctive character or the repute' of the claimant's reputable registered trade mark.

Intel Corporation, proprietor of the UK national word mark INTEL for computers and computer-related goods, sought to invalidate CPM's registered mark INTELMARK (registered for marketing and telecommunication services). The application was dismissed by both the Hearing Officer and the High Court. Intel Corporation appealed to the Court of Appeal arguing that Article 4(4)(a) of the Directive protects a proprietor of a registered trade mark with a reputation against the risk of dilution. Intel Corp. argued that the use of any mark similar to its well-known (and it argued, unique) trade mark "INTEL", regardless of the goods or services for which the other mark is used, endangers the distinctive character of the mark INTEL and that "it is important to stop any encroachment at the outset, otherwise that mark will suffer a death by a thousand cuts".

In its previous ruling in Adidas-Salomon and Adidas Benelux [2003] ECR I-12537 the ECJ held that in order to enjoy the protection in Article 4(4)(a) of the Directive (and the other equivalent provisions) it is necessary to establish that the defendant's mark would be 'linked' in the relevant consumers' minds with the earlier mark as a result of the similarity between the two. It is enough that the defendant's mark brings to mind the claimant's reputable trade mark. It is not necessary to show that such link leads to confusion. Relying on that decision, Intel Corp. argued it was sufficient to warrant protection for its mark under Article 4(4)(a) that such a link was established.

The ECJ acknowledged that the legislation protects against three types of harm to the claimant's interest - taking unfair advantage of the reputation of the mark (piggy-backing); causing detriment to that reputation (for example, by disparagement or negative associations); and causing "detriment to the distinctive character" of a reputable mark which concerns the risk of "dilution", "whittling down" or "blurring". The latter was the one at issue in the Intel case. However, the Court rejected Intel's broader proposition that where it is established that a 'link' between the marks is created in consumers' minds, dilution should, at least in some cases, be assumed. The Court held that the legislation requires the claimant to adduce proof of the harm to its reputable trade mark, in addition to and independently of the requirement to establish a 'link' (even though there is often a relationship between the two issues).

The Court held that the proprietor of the reputable mark has to demonstrate either actual and present injury to its mark or that there is a serious risk that such an injury will occur in the future. Once either of those is established, the burden will shift to the defendant to demonstrate 'due cause' as a defence.
The Court first analysed the type of circumstances that should be taken into account in relation to the question whether a link would be made by consumers between the defendant's mark and the claimant's reputable mark. The general rule, it was held, is that one must take into account all factors relevant to the circumstances of the case and the existence of the link must be assessed globally. More particularly, the Court referred to the following factors:

  • the degree of similarity between the conflicting marks – although even if the conflicting marks are identical, this is not sufficient to conclude that a link would be made;
  • the nature of the respective goods or services for which the conflicting marks are registered or used – the greater the difference between the respective goods or services the less likely it is that consumers exposed to the defendant's mark would be familiar with the claimant's mark. The Court acknowledges that in the case of some reputable marks all groups of consumers may be aware of the claimant's mark. Even if there is awareness, in some cases the dissimilarity of goods or services could be such as to make it unlikely that consumers would make the link between the two marks; in other cases, the Court noted, consumers could make the link despite the goods or services being wholly dissimilar;
  • the strength of the reputable trade mark's reputation – the stronger it is the stronger the likelihood of consumers making the 'link';
  • the degree of reputable mark's distinctive character – the more distinctive it is (inherently or through use) the higher the likelihood of a link being made; and
  • the existence of the likelihood of confusion on the part of the public (although likelihood of confusion is not a requirement, if it is established the existence of a 'link' is proven).

If the defendant's mark is linked, in the mind of the average consumer (who is reasonably well informed and reasonably observant and circumspect) to the claimant's mark then the existence of a link is established. However, the existence of a link between the conflicting marks does not dispense the proprietor of the earlier trade mark from having to prove actual and present injury to its mark or a serious likelihood that such an injury will occur in the future.

Similar factors as those considered in relation to the question of the 'link' would be relevant in assessing the question of detriment to the distinctive character of the mark, or the 'dilution'. However, the fact that the earlier mark has a huge reputation, that those goods/services are dissimilar to the goods/services of the later mark, that the earlier mark is unique in respect of any goods or services and that for the average consumer the later mark calls the earlier mark to mind, is not sufficient to establish the detriment to the distinctive character of the earlier mark. The national court must assess all of these as well as other factual circumstances to reach an independent factual conclusion on the question of dilution.

Perhaps the most significant comment the Court made was that in order to prove detriment to the distinctive character of the claimant's mark, evidence has to be presented that as a result of the use of the later mark, the "economic behaviour" of the average consumer (of the claimant's goods or services) "has changed", or that there is "a serious likelihood that such a change will occur in the future". The Court did not elaborate on the nature of that change of economic behaviour but it is clear that impact on sales of the claimant's goods/services is at least one important element.

The Court commented further that, in assessing detriment to the distinctive character of the claimant's reputable mark, it is immaterial whether the defendant drew any commercial benefit from the distinctive character of that mark. (If proven, such commercial benefit could support an independent argument based on 'taking unfair advantage').

In the future, both claimants and defendants will seek to rely on the decision in Intel v. CPM in the context of 'dilution' claims. Claimants will emphasise that the legislation seeks to protect against their marks being blurred or diluted. In addition, there is plenty in this decision for claimant's to rely on in demonstrating that consumers are likely to make a 'link' between the two competing marks. Defendants, on the other hand, will emphasise that dilution cannot be assumed and that claimants have to meet two separate hurdles (showing a 'link' on the one hand and 'detriment' or 'unfair advantage' on the other). Defendants will also seize on the Court's comments regarding the need to adduce evidence demonstrating a change in the relevant consumers' economic behaviour as a result of the use of the defendant's mark, or at least a "serious likelihood that such a change will occur".

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.