ECJ hands down decision in INTELMARK case

On 27th November 2008, the ECJ handed down its decision in C-252/07 Intel Corp v CPM (UK) Ltd. This concerned a reference for a preliminary ruling from the Court of Appeal of the United Kingdom whereby it sought guidance on the meaning of "link" and the proper interpretation of detriment to the distinctive character of a registered mark. The ECJ carried out a tour d'horizon of the relevant law in this area. Importantly, it confirmed that a link was caused where the latter mark "calls to mind" the earlier mark. It emphasised that whether or not there was a link required, in the time-honoured phrase, a global assessment taking into account all the relevant factors.

It confirmed that the establishment of a link is a necessary but not sufficient condition. It must be shown that such a link causes the latter mark to cause detriment to the distinctive character of the earlier mark. Instead of adopting a US-style dilution test, it held that it must be shown that the later mark causes a "change in the economic behaviour of the average consumer" of the goods or services. The authors of Intellectual Property in Europe take great pleasure in this decision as indeed it was precisely such a test that they proposed sould be applicable (see para 3-131 of the book).

Further commentary on this decision can be seen in the Trade Marks chapter section of this website.