CPM, a large field marketing and telemarketing firm in the UK,
registered 'Intelmark' in 1997 as a trade mark for "marketing and
telemarketing services." Silicon Valley-based Intel wants that mark
revoked.
The Court of Appeal said yesterday that Intel's case should fail
because CPM operates a completely different business to it. Intel
has already lost before the Trade Marks Registry and the High
Court.
Intel argued that an 'association' between the two marks should
be enough to merit its challenge, that the 'intel' part of
Intelmark would 'bring to mind' the microchip company and cause
confusion.
Intel tried to show similarity between the companies by arguing
that CPM's goods and services "might well involve the use of
computers." Lord Justice Jacob scoffed the observation. "That is an
obvious nonsense," he wrote. "I expect the services also involve
the use of telephones, paper, pens and office furniture."
"Is a mere 'bringing to mind' of an earlier mark with a
reputation enough to prevent a later registration?" he asked in his
ruling. "And is it an infringement of a registered mark which has a
reputation if a defendant uses, for dissimilar goods or services, a
mark which merely 'brings to mind' the registered mark?"
The Court took the view that it was not. "I do not see that
trade mark law need be so oppressive and all powerful," said Jacob.
"I would hold that a 'link' requires more than such a tenuous
association between the two marks. If a trade mark for particular
goods or services is truly inherently and factually distinctive it
will be robust enough to withstand a mere passing bringing to mind
when it or a similar mark is used for dissimilar goods or
services."
He continued: "The average consumer is a reasonably sensible
individual. He is used to lots of trade marks in different fields –
some of which may resemble trade marks for other fields. In this
country for example, for a long time Jif lemon juice and Jif
washing up liquid co-existed happily, not to mention Jiffy for
padded bags and condoms. Sometimes, but perhaps not surprisingly,
trade mark owners of big brands want more protection than they
really need."
Rebecca Tilbury, a trade mark specialist at Pinsent Masons, the
law firm behind OUT-LAW.COM, said: "The real crux of the case is
that the Intel mark is just not unique or strong enough to warrant
the protection afforded to marks such as Rolls Royce or Kodak
because the average consumer would not think there is a trade
connection."
"The point which needs to be emphasised is that the average
consumer, in the words of Jacob, is a 'reasonably sensible
individual' and is used to seeing similar brands in the marketplace
which co-exist in different fields," said Tilbury.
However, yesterday's opinion by the Court of Appeal is not a
final ruling in the matter: the Court has referred questions to the
European Court of Justice.
The Trade Marks Directive of 1988 includes a provision that, in
effect, allows a member state to refuse or declare a trade mark
invalid where it is identical or similar to an earlier mark,
despite being for dissimilar goods or services, where the earlier
mark has a reputation that would be damaged by the later mark.
The Court of Appeal has put specific questions to the European
Court of Justice seeking guidance on the interpretation of this
provision. However, Jacob went on to express his own views on how
he believes the questions should be answered – and he believes they
should be answered in CPM's favour.
Lords Justice Keene and Mummery agreed with his opinion.
