Intel Corporation Inc v CPM United Kingdom Ltd

For a reputed trade mark, use of a later mark for dissimilar goods or services is not caught merely because it brings the earlier mark to mind. A qualifying link requires more than a tenuous association. The facts may suffice where the consumer perceives an economic connection, or substantially wonders whether one exists. The court must assess the specified goods and services and ask whether the earlier mark’s distinctiveness or repute is really likely to be affected. Detriment to distinctive character is tied to the earlier mark for the goods or services for which it is registered. It requires a realistic global appreciation. General speculation, a mere possibility, or an assertion of damage is insufficient. Relevant factors include the earlier mark’s pulling power, uniqueness, inherent distinctiveness and reputation, any commercial advantage, the later mark’s similarity, and likely effects on consumer behaviour.

Intel Corporation sought invalidity of CPM United Kingdom Ltd’s registered mark INTELMARK, registered in class 35 for marketing and telemarketing services. Intel had a huge reputation in INTEL for computers and computer-linked goods and services, which were accepted to be dissimilar to CPM’s services. The lower decisions proceeded on the basis that INTELMARK was unused at registration and that its use would not suggest a trade connection with Intel. Passing off was not pursued.

The appeal was a second appeal from the Trade Marks Registry decision of 1 February 2006 and Patten J’s judgment dated 26 July 2006, reported at [2006] EWHC 1878 (Ch). The central issue was whether, under the Trade Marks Directive, a later mark used for dissimilar goods or services could be refused or restrained merely because it brought a reputed earlier mark to mind.

Jacob LJ gave the leading judgment, with Keene and Mummery LJJ agreeing. The Court of Appeal decided that questions of European trade mark law should be referred to the European Court of Justice. It expressed the following views on the proposed answers.

1. Under Articles 4(4)(a) and 5(2), the mere fact that a later mark brings a reputed earlier mark to mind is insufficient. A qualifying link requires more than a tenuous association. A perceived trade connection, or substantial rather than fleeting wonder about such a connection, may be sufficient.
2. The assessment must have regard to the nature of the later goods or services. The court should ask whether the average consumer would consider that the owners have an economic connection and whether use for the specified later goods or services is really likely to affect the earlier mark’s distinctiveness or repute.
3. Detriment to distinctive character or repute concerns the distinctive character or repute of the earlier mark for the goods or services for which it is registered. The statutory provisions do not require a general inquiry into distinctiveness across unrelated goods or services.
4. Detriment to distinctive character requires a realistic global appreciation. General speculation, a mere possibility, or an assertion of damage is insufficient. The harm or prospect of harm must be real and tangible. Relevant, non-exhaustive factors include pulling power, commercial advantage, uniqueness, the later mark’s similarity, likely effects on consumer behaviour, inherent distinctiveness and the strength of reputation. The assessment is one of degree.
5. The Court understood Adidas-Salomon AG v Fitnessworld Trading Ltd (Case C-408/01; [2003] ECR I-12537) as establishing that likelihood of confusion is unnecessary, but not that every mental association constitutes a sufficient link. The existing English authorities, including Premier Brands v Typhoon Europe ([2000] FSR 767) and Electrocoin Automatics v Hitachi Credit ([2005] FSR 7), required further consideration and were not accepted as plainly wrong.

The court also noted that section 11(1) of the Trade Marks Act 1994 created an obstacle to infringement proceedings and that section 47(6) made invalidity relevant to removing it. The judgment did not finally determine the validity of INTELMARK; the European questions were to be referred.

• Court of Appeal (Civil Division): On the second appeal, the court decided to refer questions concerning Articles 4(4)(a) and 5(2) of the Trade Marks Directive to the European Court of Justice.
• High Court of Justice, Chancery Division (Intellectual Property): Patten J determined the appeal from the Trade Marks Registry in a judgment dated 26 July 2006, reported at [2006] EWHC 1878 (Ch).
• Trade Marks Registry: Hearing Officer Mr M Reynolds decided the invalidity request on 1 February 2006.