EN Official Journal of the European Union C 19/4

Judgment of the Court (First Chamber) of 27 November 2008 (reference for a preliminary ruling from the Court of Appeal (England and Wales) (Civil Division) — United Kingdom) — Intel Corporation Inc. v Cpm United Kingdom Limited

(Case C-252/07) (1)

(Directive 89/104/EEC - Trade marks - Article 4(4)(a) - Trade marks with a reputation - Protection against the use of a later identical or similar mark - Use which takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier trade mark)

(2009/C 19/07)

Language of the case: English

Referring court

Court of Appeal (England and Wales) (Civil Division)

Parties to the main proceedings

Applicant: Intel Corporation Inc.

Defendant: Cpm United Kingdom Limited

Re:

Reference for a preliminary ruling — Court of Appeal (Civil Division) — Interpretation of Articles 4(4)(a) and 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Earlier mark having a reputation — Criteria to be taken into account in order to establish whether there is a link within the meaning of Case C-408/01 Adidas-Salomon AG and Adidas-Benelux BV

Operative part of the judgment

1. Article 4(4)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that whether there is a link, within the meaning of Case C-408/01 Adidas-Salomon and Adidas Benelux, between the earlier mark with a reputation and the later mark must be assessed globally, taking into account all factors relevant to the circumstances of the case.

2. The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks.

3. The fact that: — the earlier mark has a huge reputation for certain specific types of goods or services, and — those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, and — the earlier mark is unique in respect of any goods or services, does not necessarily imply that there is a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks.

4. Article 4(4)(a) of Directive 89/104 must be interpreted as meaning that whether a use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark must be assessed globally, taking into account all factors relevant to the circumstances of the case.

5. The fact that: — the earlier mark has a huge reputation for certain specific types of goods or services, and — those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, and — the earlier mark is unique in respect of any goods or services, and — for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark to mind, is not sufficient to establish that the use of the later mark takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark, within the meaning of Article 4(4)(a) of Directive 89/104.

6. Article 4(4)(a) of Directive 89/104 must be interpreted as meaning that: — the use of the later mark may be detrimental to the distinctive character of the earlier mark with a reputation even if that mark is not unique; — a first use of the later mark may suffice to be detrimental to the distinctive character of the earlier mark; — proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of 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.

(1) OJ C 183, 4.8.2007.