December 2008
Intel v CPM - Bad News for Famous Brands: Good News for Everyone Else
There was some bad news for the Intels and the MacDonalds of the world this month with news that their monopoly rights may not extend to completely unrelated goods and services. Under trade mark law owners of famous brands are given broader rights in relation to their trade marks in order to prevent other people taking advantage of the distinctiveness or reputation of the marks.
In this case, computer giants Intel applied to revoke the registration of the trade mark INTELMARK on this basis. However the difficulty for INTEL was that their registrations covered computers and computer linked goods and services, meanwhile the INTELMARK covered "Marketing and telemarketing services". Intel started revocation proceedings through the UKIPO in 2006 and the proceedings soon spread to first the High Court and then to the Court of Appeal before going to the highest court in euro-land, the ECJ.
In what has been welcomed as a positive decision for anti-monopolists the ECJ has made it very difficult for owners of famous marks to extend their rights beyond what is covered by their trade mark registrations. Firstly famous rights holders must establish a link between the respective marks. The ECJ said that courts should consider the following factors:
- the similarity of the marks;
- the nature of the goods or services covered by the marks and in particular whether the relevant consumers of the goods and services overlap; and
- the distinctiveness of the earlier mark and whether the earlier mark is unique or essentially unique.
While it is not necessary for all these elements to be present, the fact that the reputation of the earlier mark is so strong that the mark is known outside of the group of its usual consumers, would help establish a link. In addition, while it is not necessary to show confusion, if confusion is established then a ‘link’ will always be established.
However even if a link is established the right’s holder must then show detriment (i.e. damage to the trade mark). In order to show detriment the mark would need to be highly distinctive and there would need to be specific evidence of damage (or potential damage). In particular, the owner of the famous mark would need to show a:
“change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.”
Briffa Comment
Damage to the intangible value of a trade mark is always one of the hardest things to prove in any trade mark dispute where trade mark owners cannot point to specific sales figures or units sold. Damage to the trade mark’s reputation, in particular, is a very elusive concept and by tying the damage to the “economic behaviour of the average consumer” the ECJ has set the bar extremely high. It may be tremendously difficult for owners of famous marks, especially in the current economic climate, to show that such economic behaviour is linked to the later mark. As such this test appears to be highly simplistic.
However this is a positive decision since it undermines the ability of famous brands to bully applicants and prevents them extending their rights to wholly unrelated goods and services. Nevertheless, applicants should still steer clear of the very famous brands like Coca Cola who can always rely on false endorsement. In addition, these marks do tend to cover a wide range of goods and services due to the amount of diversification these businesses are involved in. Some famous brands are deliberately registered in relation to all 45 classes to ensure that the mark is fully protected. As such, applicants should not assume that they can file similar marks to famous brands for goods and services which, on the face of it, may not appear to be covered by the famous marks registrations. Accordingly, we would always advise conducting clearance searches from the outset.
For more information contact info@briffa.com