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Judge doubts Intel can defeat Intelmark trademark

Says proposed link is too tenuous

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The Court of Appeal has said Intel should fail in its bid to erase the trademark of a telemarketing company.

The court has referred questions to the European Court of Justice but made clear that the chip giant deserves to lose.

CPM, a large field marketing and telemarketing firm in the UK, registered "Intelmark" in 1997 as a trade mark for "marketing and telemarketing services". Silicon Valley-based Intel wants that mark revoked.

The Court of Appeal said yesterday that Intel's case should fail because CPM operates a completely different business to it. Intel has already lost before the Trade Marks Registry and the High Court.

Intel argued that an "association" between the two marks should be enough to merit its challenge, that the "intel" part of Intelmark would "bring to mind" the microchip company and cause confusion.

Intel tried to show similarity between the companies by arguing that CPM's goods and services "might well involve the use of computers". Lord Justice Jacob scoffed the observation. "That is an obvious nonsense," he wrote. "I expect the services also involve the use of telephones, paper, pens and office furniture."

"Is a mere 'bringing to mind' of an earlier mark with a reputation enough to prevent a later registration?" he asked in his ruling. "And is it an infringement of a registered mark which has a reputation if a defendant uses, for dissimilar goods or services, a mark which merely 'brings to mind' the registered mark?"

The court took the view that it was not. "I do not see that trademark law need be so oppressive and all powerful," said Jacob. "I would hold that a 'link' requires more than such a tenuous association between the two marks. If a trademark for particular goods or services is truly inherently and factually distinctive it will be robust enough to withstand a mere passing bringing to mind when it or a similar mark is used for dissimilar goods or services."

He continued: "The average consumer is a reasonably sensible individual. He is used to lots of trademarks in different fields – some of which may resemble trademarks for other fields. In this country for example, for a long time Jif lemon juice and Jif washing up liquid co-existed happily, not to mention Jiffy for padded bags and condoms. Sometimes, but perhaps not surprisingly, trademark owners of big brands want more protection than they really need."

Rebecca Tilbury, a trademark specialist at Pinsent Masons, the law firm behind OUT-LAW.COM, said: "The real crux of the case is that the Intel mark is just not unique or strong enough to warrant the protection afforded to marks such as Rolls Royce or Kodak because the average consumer would not think there is a trade connection."

"The point which needs to be emphasised is that the average consumer, in the words of Jacob, is a 'reasonably sensible individual' and is used to seeing similar brands in the marketplace which co-exist in different fields," said Tilbury.

However, yesterday's opinion by the Court of Appeal is not a final ruling in the matter: the court has referred questions to the European Court of Justice.

The Trade Marks Directive of 1988 includes a provision that, in effect, allows a member state to refuse or declare a trade mark invalid where it is identical or similar to an earlier mark, despite being for dissimilar goods or services, where the earlier mark has a reputation that would be damaged by the later mark.

The Court of Appeal has put specific questions to the European Court of Justice seeking guidance on the interpretation of this provision. However, Jacob went on to express his own views on how he believes the questions should be answered – and he believes they should be answered in CPM's favour.

Lords Justice Keene and Mummery agreed with his opinion.

Copyright © 2007, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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