INTEL mark can't shift INTELMARK
The IPKat is pleased to tell you all about Intel Corporation Inc v CPM United Kingdom Ltd  EWHC 1878 (Ch), a decision last Wednesday of Mr Justice Patten in the Chancery Division. It still hasn't made BAILII but is noted on LexisNexis Butterworths (well done!).
Intel owns a large number of United Kingdom and Community trade mark registrations for the word marks INTEL and INTEL INSIDE for goods in classes 9 and 16 and for services in classes 38 and 42. CPM subsequently registered the word INTELMARK as a service mark for marketing and telemarketing services in class 35. On discovering this, Intel sought a declaration of invalidity on the ground that the use of INTELMARK without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of its earlier INTEL marks under section 5(3) of the Trade Marks Act 1994
The hearing officer dismissed Intel's application since he was not persuaded that there would be any material damage to the distinctiveness or repute of INTEL if INTELMARK was used in a normal and fair manner in relation to the services for which CPM registered it. Intel appealed on the grounds that (i) the hearing officer failed to give due weight to the evidence of the reputation enjoyed by INTEL in relation to computers and computer-linked products, and of its distinctive character, and that (ii) he failed to apply the "global appreciation" test required under section 5(3) when assessing whether the use of INTELMARK would lead to unfair advantage or detriment.
Patten J dismissed Intel's appeal. In his opinion
* When section 5(3) was relied on as a ground of opposition or invalidity, the question was whether use of the later mark would either take unfair advantage or be detrimental to the distinctive character or repute of the earlier mark, the emphasis being on the reputation enjoyed by the earlier mark and the use or misuse of that reputation by the owner of the later mark, either for its own benefit or at the expense of the earlier mark.The IPKat notes the comment of the judge that the difference between the goods and the services could not be bridged simply by the strength of the INTEL mark itself. That seems quite correct. But why, complains Merpel, did he need to keep referring to dilution and tarnishment, when those words form no part of the trade mark harmonisation directive or of the UK Act itself?
* When considering exploitation of the distinctive character of the earlier mark, one first must ask if any association or link was necessarily made between the two marks.
* The making of the association was not necessarily to be treated as a detriment or the taking of an unfair advantage in itself. In cases of unfair advantage it was likely to be necessary to show that the making of the link between the marks had economic consequences beneficial to the user of the later mark.
* As to detriment the association between the marks (and therefore potentially between the products or services to which they related) might be detrimental to the strength and reputation of the earlier mark if it tarnished it by association or made it less distinctive. That was likely to take place as a consequence of the same mental process which linked the two marks in the minds of consumers and was essentially a negative reaction and effect.
* Detriment could take the form of either blurring or tarnishing. Dilution occurred where the distinctiveness of the mark was eroded and could occur when the mark was regularly used in connection with different or less exclusive types of product which diminished or lessened its link in the eyes of the public with the goods or services for which the mark was created.
* It was necessary to show that in all the circumstances of the case the prospect of dilution was made out. Dilution was not established merely by the use of a similar, or even identical, sign for a dissimilar class of goods or services. The circumstances had to justify the conclusion that the character or repute of the earlier mark would actually be weakened in the eyes of consumers by its association through the later mark with a different class of goods or services assuming the fair and reasonable use of the later mark. Where the differences between the marks and the products or services to which they related indicated that no real connection would be made between them in the minds of the public, then that kind of damage could not occur.
Here's what The Register says about this dispute
Legal IT comment from Out-Law here