Eleanor Sharpston has published her opinion on a trade mark battle between Intel and a telemarketing firm but has failed to give trade mark experts the clarity that they were hoping for.
Intel sued CPM, a field marketing and telemarketing company, over its Intelmark trade mark, which it registered for marketing and telemarketing services. Intel has its own name registered as a trade mark for computer chips and related products and claimed that the trade mark 'Intelmark' caused confusion with its own, despite being registered for services which were in different categories to its products.
Intel failed to stop the registration at the UK Intellectual Property Office and the High Court. The Court of Appeal was scathing about its case but asked the European Court of Justice (ECJ) to advise on the extent to which a trade mark in one field can be infringed by a trade mark in another.
Europe's Trade Marks Directive says that a country's courts can declare a mark invalid if it is identical or similar to an earlier mark that is in a different category. This can happen if the earlier mark has a reputation that would be damaged by the later one.
The Court of Appeal asked the ECJ to outline the circumstances under which a link between the two trade marks could be said to be made and under what circumstances that link would constitute unfair trade or detriment to Intel.
The opinion of an Advocate General helps the ECJ make a ruling. Although it is not binding it is followed in around 80% of ECJ cases.
Sharpston said that the fact that the new trade mark would call the old one to the mind of a consumer was enough to establish a link between the two.
"The fact that the earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the goods or services of the later mark is in principle tantamount to the establishment of a link in the mind of the relevant public," she said in her opinion.
She said, though, that the establishment of a link was not enough to justify the revoking or refusal to register a trade mark.
In order to succeed in blocking the new trade mark's registration a company would have to show that the new mark received an unfair advantage from the mental association with the earlier mark, she said.
A company would also have to establish that their mark had been tarnished and that a blurring between the two marks in the consumer's mind had taken place, Sharpston said.
She said that to establish detriment to the earlier mark owner that mark does not have to be unique, the later mark has to have been used a number of times, and there is no burden on the owner of the earlier mark to prove that confusion altered the economic behaviour of the consumer.
Overall, said Sharpston, a court must base its judgment on the facts before it.
"In order to decide whether a link or unfair advantage or detriment is established, the national court must take account of all factors relevant to the circumstances of the case," she said, "The nature of the goods or services may be relevant to determining whether there is a link, but an absence of similarity between the product areas concerned cannot be taken to imply the absence of such a link."
Iain Connor, an intellectual property specialist at Pinsent Masons, the law firm behind OUT-LAW.COM, said that the opinion was not as prescriptive as those working in trade mark law had hoped it might be.
"We hoped that this would give some strong guidance as to the scope of that earlier trade mark and the extent to which it could be used to prevent others from registering marks where that ultimately could have some diluting effect even where the goods were in a different class," he said.
"If goods are in the same class it would mean that there would be some considerable scope for confusion, but when you step outside that and into the realms of dissimilar goods and services it was hoped that this would provide guidance," he said. "While this guidance is pragmatic it is ultimately quite unhelpful in that it doesn't provide the certainty that this area requires."
If the ECJ follows Sharpston's opinion it will be up to the Court of Appeal to apply it to the facts of the Intel case, but Lord Justice Jacob in his ruling was dismissive of many of Intel's arguments.
When Intel tried to claim similarity between the companies because CPM's work would involve the use of computers, Lord Justice Jacob said: "that is an obvious nonsense. I expect the services also involve the use of telephones, paper, pens and office furniture."
"The average consumer is a reasonably sensible individual," he said. "He is used to lots of trade marks in different fields – some of which may resemble trade marks for other fields … sometimes, but perhaps not surprisingly, trade mark owners of big brands want more protection than they really need."