Intel dilution decision

Well than as promised here's a slightly more in depth look at the decision in the Intel case.

Background

Intel (that's the computer chip makers) sued CPM (a marketing and telemarketing company) over the registered trade mark 'Intelmark'. 'Intelmark' is registered for marketing and telemarketing services, Intel on the otherhand have their name registered for computer chips (and other related products). Intel's claim was that 'Intelmark' caused confusion with their own mark, despite it's use on very different goods / services. Intel opposed the application but the UK IPO found in CPM's favour, as did the High Court. Intel then appealed to the Court of Appeal who referred to the ECJ for clarification as to the extent of which trade marks in different fields could infringe each other.

Trade Mark Directive

Article 4(4)(a) provides that a mark can be prevented from registration or declared invalid if it is identical or similar to an earlier mark in a different class as long as this earlier 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 ECJ was asked how a link between the marks could be made and what would be considered as unfair advantage or detriment.

The Ruling

As you may or may not be aware when cases such as this are put forward to the ECJ it does not itself decide for example if 'Intelmark' is an infringement, instead it makes a decision as to the questions asked of it. It is then down to the referring court to apply the ECJ's decision.

The ECJ determined that in deciding whether there was a link between two marks, and whether there was unfair advantage or detriment a global assessment should be made, taking into account all relevant factors. In order to show a link it is only neccessary for the latter mark to bring to mind the earlier mark "for the average consumer, who is reasonably well informed and reasonably observant and circumspect,". Thus a huge reputation for certain goods is not enough to imply a link between marks. "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."

So seemingly the ECJ has put the onus on the earlier brand to somehow show that they suffer economically because of this latter brand, but the question that is being discussed around the IP blogs is how is this done? How can it be shown that particular lossed are due to this and not for example the credit crunch? Or a change in interest rates etc. Another worry is that this ruling leaves it open for people to go and register famous trade marks in different classes (Nike for food perhaps?), maybe this is a ploy by the ECJ to raise revenue for OHIM by forcing brand owners to attempt registration in all classes?