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Court ruling hits trade mark rights
Published: November 27 2008 23:42 | Last updated: November 28 2008 10:56
Businesses could have more difficulty protecting their trade mark rights from rivals who encroach on their brand names in different markets, in the wake of a far-reaching decision in Europeâs top court on Thursday.
The case involved Intel, the US chipmaker, and CPM which had registered the trade mark Intelmark for marketing and telemarketing services. An English court referred the matter to the Luxembourg-based European Court of Justice to decide whether the link between Intelâs name and Intelmark was strong enough to impinge on the chipmakerâs trade mark rights.
The core issue was whether if a trade mark âbrought to mindâ a more famous one, this amounted to sufficient grounds to disallow its use.
The EU court, however, ruled that the fact that the Intel name had a huge reputation, and that consumers would be reminded about it when the Intelmark name was mentioned did not demonstrate that Intelmark was taking unfair advantage.
Lawyers said that the ruling was âbad newsâ for brand owners, whose protection would be diluted.
âFor the brand to be able to complain now there has to be a âchange in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered,â said Andy Millmore, partner at Harbottle & Lewis.
âIn other words, it is not enough that people may buy more of the second brand â they have to buy less of the first. The mere fact that it seems unfair or trading on an earlier brandâs reputation seems not to be enough.â
âThe evidential bar has been lifted with the need to prove at least a serious likelihood of injury to the trade mark,â said Joel Smith, partner at Herbert Smith.
Published: November 27 2008 23:42 | Last updated: November 28 2008 10:56
Businesses could have more difficulty protecting their trade mark rights from rivals who encroach on their brand names in different markets, in the wake of a far-reaching decision in Europeâs top court on Thursday.
The case involved Intel, the US chipmaker, and CPM which had registered the trade mark Intelmark for marketing and telemarketing services. An English court referred the matter to the Luxembourg-based European Court of Justice to decide whether the link between Intelâs name and Intelmark was strong enough to impinge on the chipmakerâs trade mark rights.
The core issue was whether if a trade mark âbrought to mindâ a more famous one, this amounted to sufficient grounds to disallow its use.
The EU court, however, ruled that the fact that the Intel name had a huge reputation, and that consumers would be reminded about it when the Intelmark name was mentioned did not demonstrate that Intelmark was taking unfair advantage.
Lawyers said that the ruling was âbad newsâ for brand owners, whose protection would be diluted.
âFor the brand to be able to complain now there has to be a âchange in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered,â said Andy Millmore, partner at Harbottle & Lewis.
âIn other words, it is not enough that people may buy more of the second brand â they have to buy less of the first. The mere fact that it seems unfair or trading on an earlier brandâs reputation seems not to be enough.â
âThe evidential bar has been lifted with the need to prove at least a serious likelihood of injury to the trade mark,â said Joel Smith, partner at Herbert Smith.