“Merely having a very well-known brand which may be brought to mind when someone else uses that mark, or a similar one, in respect of different goods or services is not enough to prevent someone using that later mark.”
The UK Court of Appeal had referred the question to the European Court in a dispute involving the world famous computer component company Intel and a marketing company, CPM, and its use of the word “Intelmark”.
The central issue revolved whether the issue of a mark by CPM “bringing to mind” a more famous one represented sufficient grounds to disallow its use.
Andy Millmore, an intellectual property specialist at Harbottle & Lewis, said: “the key question was how much protection a trademark could expect from ‘dilution’ by other people using something similar for different purposes, or can a really well-known and distinctive mark expect to be reserved by its owners against all goods and services. The European Court has effectively set tight limits.
“For the brand to be able to complain now there has to be a ‘change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered’.
“In other words, it is not enough that people may buy more of the second brand – they have to buy less of the first. The mere fact that it seems unfair or trading on an earlier brand’s reputation seems not to be enough.”