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Intel v CPM: what the experts say ... so far

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The European Court of Justice ruling last Thursday in Intel v CPM (noted here by the IPKat) has not just attracted a fully-fledged Rapid Response Seminar. It has also generated a batch of swift responses, some of which the Kat lists below.

Ben Evans (Lawdit): "It is therefore for the earlier trade mark to show that they have suffered economic loss, or a likelihood of the same. This is likely to be very difficult to show and it will be interesting to see how this decision is applied by the courts".

Andy Millmore (Harbottle & Lewis), whose quote was picked up by FT.com: "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."

Lee Curtis (Out-law.com, Pinsent Masons): "It's unlikely that this ruling will provide a green light for traders to trade on the back of trade marks which are obviously very well known such as Coca-Cola. If someone used the Coca-Cola name for, say, roofing tiles, I'm certain that courts would find a way to stop them. The use would upset the drinks company's licensees, for instance ? and that?s economic behaviour. If nothing else, judges would apply their common sense. Sometimes infringement will be blatantly obvious and they still have discretion to use that".

Sahira Khwaja (Lovells, quoted in Times Online): ?In a case like Intel and Intelmark where the two companies operate in different sectors, it is going to be very difficult for the existing brand to prove it has lost out specifically because another company is using a similar brand?.

Joel Smith (Herbert Smith, quoted in Times Online): "?The big message is that superbrands are denied absolute protection and the ECJ has reined in their monopoly of famous names".

Paul McClenaghan (Stephenson Harwood, quoted in Times Online): "This ruling is likely to come as a blow to owners of well-known brands in Europe because the ECJ has refused to follow the American courts in giving brand owners a wide ability to protect against dilution. Instead the court has adopted a more pragmatic view where injury or likelihood of injury to the brand is required".

It's curious, the IPKat says, that some people consider this decision to be bad news for brands. Anyone might be forgiven for thinking that INTEL is a brand but INTELMARK is not.

Full post as published by IPKat on December 01, 2008 (boomark / email).