UK dilution reference to the ECJ

Jacob LJ, in a leading judgment delivered today in the Court of Appeal in Intel v CPM, has referrred a number of questions on s.5(3) TMA 1994/Art.4(4)(a) Directive 89/104 to the ECJ. The questions are:

1. For the purposes of Art. 4(4)(a) of the First Council Directive 89/104 of 21 December 1988, where:
(a) the earlier mark has a huge reputation for certain specific types of goods or services,
(b) those goods or services are dissimilar or dissimilar to a substantial degree to the goods or services of the later mark,
(c) the earlier mark is unique in respect of any goods or services,
(d) the earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the services of the later mark, are those facts sufficient in themselves to establish

(i) "a link" within the meaning of paragraphs [29] & [30] of Adidas-Salomon AG v. Fitnessworld Trading Ltd, Case C-408/01, [2003] ECR I-12537 [IPKat says: probably, but this is only part of the challenge]

and/or

(ii) unfair advantage and/or detriment within the meaning of that Article?
[IPKat says: No, not per se - this would be absolute protection for really famous marks. However, the facts which establish the fame of the mark, might also be relevant to establishing the unfair advantage/detriment, i.e. same facts, but used in a reasoned argument in a different way]

2. If no, what factors is the national court to take into account in deciding whether such is sufficient? Specifically, in the global appreciation to determine whether there is a "link", what significance is to be attached to the goods or services in the specification of the later mark?

[The IPKat says that this question is badly phrased - does it refer to 1(i) or (ii)? The second part is particularly tricky. The UK courts have been taking the view that similarity of goods is helpful for establishing a link. However, this can't be a prerequisite, since the relevant provision originally only covered dissimilar goods.]

3. In the context of Art. 4(4)(a), what is required in order to satisfy the condition of detriment to distinctive character? Specifically, does

(i) the earlier mark have to be unique, [The IPKat thinks not. A mark can be distinctive without being unique. Besides, if the legislator had meant the protection to be limited to unique marks, he would have said so. Again, badly phrased - unique on the market for the product(s) in question, or on the market in toto?]

(ii) is a first conflicting use sufficient to establish detriment to distinctive character [The IPKat says that this is bound up with part iii. The real question is where does one draw the line - does one sit and watch while something that may cause harm in the future is allowed to contiune? The IPKat thinks that to do so is shortsighted] and

(iii) does the element of detriment to distinctive character of the earlier mark require an effect on the economic behaviour of the consumer? [The IPKat says, surely not - lots of marks applied for and opposed under Art.4(4)(a) will be unused, and so won't be able to have had such an effect on consumers].