Viewpoint of the European Union on determining the scope of protection of famous trademarks looked back from the case of Intel Corporation Inc vs. United Kingdom Limited (Case C-252/07)[1]

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The European Union's legal position on the protection of well-known trademark can be found in the lawsuit Intel Corporation Inc vs. United Kingdom Limited (Case C-252/07).

Intel is recognized a trademark with high reputation in the UK but Intel’s claim for anti-dilution was not accepted by both the UK IPO and UK court

Intel Corporation Inc is the owner of the word mark INTEL registered in the UK along with multiple national registrations including the community trademark (CTM) containing the word INTEL. The goods and services bearing the mark INTEL consist of computers, computer-related commodities under classes 9, 16, 38 and 42. INTEL is a trademark with huge reputation in the UK pertaining to microprocessor products (chips and peripherals) and multimedia and business software (senior mark).

CPM United Kingdom Ltd ("CPM") is the national trademark holder comprising the words INTELMARK effectively registered in the UK since January 31, 1997 associated with services of 'marketing and remote marketing' categorized in class 35 (junior mark). On October 31, 2003, Intel Corporation filed a request for validity cancellation against the junior mark INTELMARK on the grounds that the use of this trademark either takes advantage of or damages the distinctive features or reputation of the senior mark.

The UK Intellectual Property Office rejected the cancellation action on February 1, 2006. Next, Intel Corporation's appeal against the UK’s IPO continued to be rejected by the High Court of Justice (England and Wales) on June 27, 2006. Intel Corporation once again appealed to the Court of Appeals of England and Wales based on both Article 4(4)(a) and Article 5(2) Directive 89/104 of the European Parliament which allows a trademark with reputation to be protected against dilution.

The UK High Court of Justice asked the CJEU for interpretation Article 4(4) of the Directive 89/104

The High Court of Justice held firstly, that INTEL is an invented word without meaning or significance beyond the products which it identifies, that the INTEL mark is unique in the sense that the word of which it consists has not been used by anyone for any goods or services other than those marketed by Intel Corporation, and, finally, that that mark has a huge reputation in the United Kingdom for computers and computer-linked products. Secondly, the court considered that the INTEL and INTELMARK trade marks are similar, but starts from the premiss that the use of INTELMARK does not suggest a trade connection with Intel Corporation. Thirdly, the court stated that the goods – essentially, computers and computer-linked products – and services for which Intel Corporation’s national and Community marks consisting of or including the word ‘Intel’ were registered are dissimilar to the services covered by the registration of the INTELMARK trade mark.

However, due to uncertainty in which circumstances the senior mark owner is entitled to protection under Article 4(4) of Directive 89/104, the High Court of Justice asked the European Court of Justice (CJEU), inter alia, that the seninor mark has a high reputation associated with certain specific products that are substantially different from the product of the junior mark, while the senior mark is considered unique when associated with any product, and the senior mark can be recalled when the customer encounters the junior mark then (i) is it sufficient to establish a "link" between the two marks?, and (ii) is it sufficient to have grounds to establish the case of taking unfair advantage of reputation or detriment to distinctive character of the senior mark or not[2].

CJEU’s Article 4(4) interpretation along with a requirement of a change in economic behavior

Answering the question of the High Court of Justice, in its ruling CJEU said that the above events ensure that the consumer can identify the relationship between the two brands INTEL and INTELMARK. However, the link alone is not enough to ensure a finding that INTELMARK took advantage of reputation or detriment to distinctive character and repute of INTEL but it requires evidence to prove a change in economic behavior of the consumer when they consume goods, services.

Because Intel Corporation could not provide the evidence proving a change in economic behavior of the average consumer of the goods or services for which the senior mark was registered consequent on the use of the junior mark, or a serious likelihood that such a change will occur in the future[3] so the CJEU judged that the whole facts and evidences presented by the High Court of Justice are not sufficient to establish that the junior mark took unfair advantage of the repute of the senior mark INTEL, or would be detrimental to the distinctive characters or fame of the senior mark within the meaning of Article 4(4)(a)[4] Directive 89/104.

Bross & Partners has had experience in assisting the clients to prepare and submit dosier and relevant evidence asking for recognition of well-known trademark in Vietnam. We also successfully helped the clients successfully defend against well-known trademark claims in Vietnam, Cambodia and Thailand. Should you have any query, please contact us at vinh@bross.vn or 84-903 287 057.

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