ECJ To Decide On Intel's Case Against 'Intelmark' Trade Mark

by Robin Pilgrim, LawAndTax-News.com, London

21 May 2007

The UK's Court of Appeal has referred to the European Court of Justice Intel's attempt to erase the Intelmark trade mark of UK telemarketing company CPM, saying however that Intel deserves to lose.

CPM registered 'Intelmark' in 1997 as a trade mark for "marketing and telemarketing services." Intel had already lost before the Trade Marks Registry and the High Court.

Lord Justice Jacob said that he had granted leave to appeal because it seemed to him that a difficult and important question of European trade mark law might arise and thus there was a "compelling reason" for the grant of permission. He had told the parties that the Court intended to refer questions to the European Court of Justice.

The judge said it was common ground that the goods and services provided under CPM's Intelmark are dissimilar to the services of the Intel mark. Intel's lawyers argued that the dissimilarity was not all that great because the defendants' services might well involve the use of computers. 'That is an obvious nonsense,' said the judge. 'I expect the services also involve the use of telephones, paper, pens and office furniture.'

The judges said that the ECJ should be asked the following questions:

• 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?
• 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?
• 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?
  

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