Eleanor Sharpston has published her opinion on a trade mark
battle between Intel and a telemarketing firm but has failed to
give trade mark experts the clarity that they were hoping for.
Intel sued CPM, a field marketing and telemarketing company,
over its Intelmark trade mark, which it registered for marketing
and telemarketing services. Intel has its own name registered as a
trade mark for computer chips and related products and claimed that
the trade mark 'Intelmark' caused confusion with its own, despite
being registered for services which were in different categories to
its products.
Intel failed to stop the registration at the UK Intellectual
Property Office and the High Court. The Court of Appeal was
scathing about its case but asked the European Court of Justice
(ECJ) to advise on the extent to which a trade mark in one field
can be infringed by a trade mark in another.
Europe's Trade Marks Directive says that a country's courts can
declare a mark invalid if it is identical or similar to an earlier
mark that is in a different category. This can happen if the
earlier mark has a reputation that would be damaged by the later
one.
The Court of Appeal asked the ECJ to outline the circumstances
under which a link between the two trade marks could be said to be
made and under what circumstances that link would constitute unfair
trade or detriment to Intel.
The opinion of an Advocate General helps the ECJ make a ruling.
Although it is not binding it is followed in around 80% of ECJ
cases.
Sharpston said that the fact that the new trade mark would call
the old one to the mind of a consumer was enough to establish a
link between the two.
"The fact that the earlier mark would be brought to mind by the
average consumer when he or she encounters the later mark used for
the goods or services of the later mark is in principle tantamount
to the establishment of a link in the mind of the relevant public,"
she said in her opinion.
She said, though, that the establishment of a link was not
enough to justify the revoking or refusal to register a trade
mark.
In order to succeed in blocking the new trade mark's
registration a company would have to show that the new mark
received an unfair advantage from the mental association with the
earlier mark, she said.
A company would also have to establish that their mark had been
tarnished and that a blurring between the two marks in the
consumer's mind had taken place, Sharpston said.
She said that to establish detriment to the earlier mark owner
that mark does not have to be unique, the later mark has to have
been used a number of times, and there is no burden on the owner of
the earlier mark to prove that confusion altered the economic
behaviour of the consumer.
Overall, said Sharpston, a court must base its judgment on the
facts before it.
"In order to decide whether a link or unfair advantage or
detriment is established, the national court must take account of
all factors relevant to the circumstances of the case," she said,
"The nature of the goods or services may be relevant to determining
whether there is a link, but an absence of similarity between the
product areas concerned cannot be taken to imply the absence of
such a link."
Iain Connor, an intellectual property specialist at Pinsent
Masons, the law firm behind OUT-LAW.COM, said that the opinion was
not as prescriptive as those working in trade mark law had hoped it
might be.
"We hoped that this would give some strong guidance as to the
scope of that earlier trade mark and the extent to which it could
be used to prevent others from registering marks where that
ultimately could have some diluting effect even where the goods
were in a different class," he said.
"If goods are in the same class it would mean that there would
be some considerable scope for confusion, but when you step outside
that and into the realms of dissimilar goods and services it was
hoped that this would provide guidance," he said. "While this
guidance is pragmatic it is ultimately quite unhelpful in that it
doesn't provide the certainty that this area requires."
If the ECJ follows Sharpston's opinion it will be up to the
Court of Appeal to apply it to the facts of the Intel case, but
Lord Justice Jacob in his ruling was dismissive of many of Intel's
arguments.
When Intel tried to claim similarity between the companies
because CPM's work would involve the use of computers, Lord Justice
Jacob said: "that is an obvious nonsense. I expect the
services also involve the use of telephones, paper, pens and office
furniture."
"The average consumer is a reasonably sensible individual," he
said. "He is used to lots of trade marks in different fields – some
of which may resemble trade marks for other fields … sometimes, but
perhaps not surprisingly, trade mark owners of big brands want more
protection than they really need."
