As noted by the IPKat earlier, the ECJ today delivered its judgment in Intel v CPM. In this case, the Court of Appeal of England and Wales asked the ECJ to rule on what is required to prove a 'link' for the purposes of Art.4(4)(a) (Europe's dilution provision). To give the court its credit, it has waded in and hasn't tried to dodge the issue (though inevitably, and correctly, it has noted that a definitive question can't be given for some of the referred points as they are matters for the national courts to evaluate). This is what it said.
A definition of detriment to distinctive character, which states that it is the equivalent of blurring: ‘such detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.’
Confirmation that a link is required, but is not sufficient in and of itself, for establishing unfair advantage/detriment.
The relevant public: For the purposes of establishing the earlier trade mark’s distinctiveness and reputation [IPKat comment: since when was distinctiveness a requirement of Art.4(4)(a)?] and blurring and tarnishment is the average consumer of the goods covered by the earlier mark. For establishing unfair advantage, the relevant public is the average consumer of the goods covered by the later mark.
Proof: actual and present injury need not be demonstrated under Art.4(4)(a). A serious risk of future injury is sufficient. [IPKat question: is this true of Art.5(2) infringement as well?]
Establishing a link
- The similarity of the mark,
- the nature of the parties’ goods or services and whether their consumers overlap,
- the distinctiveness of the earlier mark and whether the mark is unique or essentially unique
The strength of the earlier mark may sometimes be helpful in establishing a link, particularly if the reputation is so strong that the mark is known outside of the group of usual consumers. It is for the national court to determine whether there is a link based on the facts before it. Confusion is not necessary (even though a link is always established where there is confusion).
The fact that, for the average consumer, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of a link.
The stronger the link (i.e. the more strongly and immediately the earlier mark is brought to mind), the great the likelihood of unfair advantage/detriment. Thus, the likelihood of unfair advantage/detriment must be assessed globally, taking into account the factors relevant to establishing a link.
The factors suggested by the national court were insufficient to establish unfair advantage/detriment since they were all addressed at establishing a link.
Detriment to distinctive character
A mark doesn’t need to be unique to suffer detriment to distinctive character. However, the more unique a mark is, the more likely it is to suffer blurring [IPKat comment: why should this be? Surely the more distinctive a mark, the more it will take to harm its distinctiveness in a more than de minimis way?]
The first use of an later mark may sometimes be sufficient to give rise to actual and present harm, or a serious likelihood that such detriment will happen.
Proving detriment to distinctive character requires evidence of a change in economic behaviour of the average consumer of the earlier goods or services as a consequence of the use of the later mark, or some likelihood that such a change will occur in the future. However, the earlier user need not show that the later user has obtained commercial benefit from the use of the earlier mark. [IPKat comment: Aaargh! How can trade mark owners prove that a change in economic behaviour is caused by a reduction in the distinctiveness of their marks, rather than external factors such as, say, the credit crunch? And worse, how can they prove a likely change in economic behaviour, except by reference to things like how distinctive the earlier mark is, and circumstantial factors about the later user’s mark (such as how similar the two marks are)?]
Good points: the ECJ hasn’t dodged the issue. In fact, it has displayed a mature understanding of the issues involved in dilution. It has also specified a number of the factors which will be helpful in mounting a successful dilution case. Furthermore, it has rejected an actual dilution standard for Art.4(4)(a), which crippled the former US legislation on dilution and would be unworkable in registrability cases because the later mark will often not have been used yet.
Bad points: The need for an effect on the economic behaviour of consumers. How is this to be proved? Will sales figures be needed? How can we be sure that a decline in such figures will be caused by harm to the mark? Is such a requirement also needed for tarnishment and unfair advantage? Also, not much on what will cause blurring.
Points which remain unclear/undecided: Are the comments on not requiring likely dilution limited to Art.4(4)(a)? The IPKat hopes not, but the court didn’t’ expressly state that they refer to Art.5(2). Nothing really in this case about tarnishment, unfair advantage or due cause (which is fair enough since they weren’t covered in the referred questions).