Legal news
Computer giant Intel has secured a favourable advocate general’s opinion in a long-running dispute over dilution of its trade mark.
Intel wants telemarketing firm CPM to revoke its “Intelmark”, which it registered in 1997 as a trade mark for marketing services. CPM refuses.
Advocate general Sharpston’s opinion (Case C- 252/07) answers questions referred to the European Court of Justice by the Court of Appeal.
Sharpston says national courts must make a “global assessment” and take account of “all factors” relevant to the circumstances of the case when determining detriment or unfair disadvantage.
“The fact that for an average consumer the earlier mark would be ‘brought to mind’ by the later mark—is itself tantamount to the establishment of a link” between the two marks,” she says. She offers the example of a “Coca Cola” paint stripper, which would be detrimental to Coca Cola’s reputation.
Macfarlanes partner Geoff Steward says: “The law of trade mark dilution is still being developed in England, with the English judges reluctantly being shown the way by Europe.
“This opinion, although only round one of the process, is good news for well known brands which, having invested millions in establishing their reputation, should be able to prevent the parasitic use of their trade marks by third parties, albeit for unrelated goods or services, seeking to free-ride on their marketing investment and reputation. Why shouldn’t Coca-Cola, for example, be entitled to stop its trade mark being used for cheap paint strippers?”
