Intel Corporation Inc. v CPM United Kingdom Ltd.
Date: 2008-11-27
5. The Court has interpreted that provision as follows in paragraphs 29 and 30 of its judgment in Case C‑408/01 Adidas-Salomon and Adidas Benelux  [2003] ECR I‑12537:
‘29 The infringements referred to in Article 5(2) of [Directive 89/104], where they occur, are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them (see, to that effect, Case C‑375/97 General Motors  [1999] ECR I‑5421, paragraph 23).
30 The existence of such a link must, just like a likelihood of confusion in the context of Article 5(1)(b) of Directive [89/104], be appreciated globally, taking into account all factors relevant to the circumstances of the case (see, in respect of the likelihood of confusion, [Case C‑251/95] SABEL  [[1997] ECR I-6191], paragraph 22, and [Case C-425/98] Marca Mode  [[2000] ECR I‑4861], paragraph 40).’
National law
6. The Directive was transposed in the United Kingdom of Great Britain and Northern Ireland by the Trade Marks Act 1994.
25. Accordingly, the interpretation of Article 5(2) of the Directive given by the Court in Adidas-Salomon and Adidas Benelux , applies equally to Article 4(4)(a) of the Directive (see, to that effect, Case C‑292/00 Davidoff  [2003] ECR I-389, paragraph 17).
The protection given by Article 4(4)(a) of the Directive
26. Article 4(4)(a) of the Directive establishes, for the benefit of trade marks with a reputation, a wider form of protection than that provided for in Article 4(1). The specific condition of that protection consists of a use of the later mark without due cause which takes or would take unfair advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark (see, to that effect, in respect of Article 5(2) of the Directive, Marca Mode , paragraph 36; Adidas-Salomon and Adidas Benelux , paragraph 27, and Case C-102/07 adidas and adidas Benelux [2008] ECR I-0000, paragraph 40).
27. The types of injury against which Article 4(4)(a) of the Directive ensures such protection for the benefit of trade marks with a reputation are, first, detriment to the distinctive character of the earlier mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark.
28. Just one of those three types of injury suffices for that provision to apply.
29. As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.
30. The types of injury referred to in Article 4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see, in relation to Article 5(2) of the Directive, General Motors , paragraph 23; Adidas-Salomon and Adidas Benelux , paragraph 29, and adidas and adidas Benelux , paragraph 41).
31. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
32. However, the existence of such a link is not sufficient, in itself, to establish that there is one of the types of injury referred to in Article 4(4)(a) of the Directive, which constitute, as was stated in paragraph 26 of this judgment, the specific condition of the protection of trade marks with a reputation laid down by that provision.
The relevant public
34. First, both a trade mark’s distinctiveness and its reputation must be assessed, first, by reference to the perception of the relevant public, which consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (as regards distinctive character, see Case C‑363/99 Koninklijke KPN Nederland  [2004] ECR I‑1619, paragraph 34; as regards reputation, see, to that effect, General Motors , paragraph 24).
37. In order to benefit from the protection introduced by Article 4(4)(a) of the Directive, the proprietor of the earlier mark must adduce proof that the use of the later mark ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’.
38. The proprietor of the earlier trade mark is not required, for that purpose, to demonstrate actual and present injury to its mark for the purposes of Article 4(4)(a) of the Directive. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future.
39. When the proprietor of the earlier mark has shown that there is either actual and present injury to its mark for the purposes of Article 4(4)(a) of the Directive or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark.
Point (i) of Question 1 and Question 2
41. The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case (see, in respect of Article 5(2) of the Directive, Adidas-Salomon and Adidas Benelux , paragraph 30, and adidas and adidas Benelux , paragraph 42).
42. Those factors include:
– the degree of similarity between the conflicting marks;
– the nature of the goods or services for which the conflicting marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public;
– the strength of the earlier mark’s reputation;
– the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
– the existence of the likelihood of confusion on the part of the public.
45. However, the fact that the conflicting marks are identical, and even more so if they are merely similar, is not sufficient for it to be concluded that there is a link between those marks.
47. The reputation of a trade mark must be assessed in relation to the relevant section of the public as regards the goods or services for which that mark was registered. That may be either the public at large or a more specialised public (see General Motors , paragraph 24).
49. Furthermore, even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.
50. Accordingly, the nature of the goods or services for which the conflicting marks are registered must be taken into consideration for the purposes of assessing whether there is a link between those marks.
52. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.
53. For the purposes of assessing where there is a link between the conflicting marks, it may therefore be necessary to take into account the strength of the earlier mark’s reputation in order to determine whether that reputation extends beyond the public targeted by that mark.
57. Finally, a link between the conflicting marks is necessarily established when there is a likelihood of confusion, that is to say, when the relevant public believes or might believe that the goods or services marketed under the earlier mark and those marketed under the later mark come from the same undertaking or from economically-linked undertakings (see to that effect, inter alia, Case C‑342/97 Lloyd Schuhfabrik Meyer  [1999] ECR I‑3819, paragraph 17, and Case C‑533/06 O2 Holdings and O2 (UK) [2008] ECR I‑0000, paragraph 59).
58. However, as is apparent from paragraphs 27 to 31 of the judgment in Adidas-Salomon and Adidas Benelux , implementation of the protection introduced by Article 4(4)(a) of the Directive does not require the existence of a likelihood of confusion.
66. First, as was pointed out in paragraph 30 of this judgment, the types of injury referred to in Article 4(4)(a) of the Directive, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them.
67. The more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the later mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark.
68. It follows that, like the existence of a link between the conflicting m arks, the existence of one of the types of injury referred to in Article 4(4)(a) of the Directive, or a serious likelihood that such an injury will occur in the future, must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include the criteria listed in paragraph 42 of this judgment.
69. As regards the strength of the reputation and the degree of distinctive character of the earlier mark, the Court has already held that the stronger the earlier mark’s distinctive character and reputation the easier it will be to accept that detriment has been caused to it (see, regarding Article 5(2) of the Directive, General Motors , paragraph 30).