ECJ Ruling makes it more difficult for famous brands to claim dilution

A ruling by the European Court of Justice (ECJ) will make it more difficult for owners of famous and well known trade marks to claim dilution, according to Withers & Rogers LLP trade mark attorneys.

The US computer chip manufacturer, Intel, filed an action in 2003 to cancel an existing UK trade mark registration for the mark INTELMARK, filed by CPM – a UK marketing and telemarketing business - in 1997.  The action was brought on the basis that the mark INTELMARK contained fully Intel’s famous trade mark INTEL and its use and registration was therefore damaging to Intel’s mark.   In a ruling last week, the ECJ concluded that whilst a link could be made in the mind of the consumer between the two marks, this link was not sufficient for Intel to establish that use of CPM’s mark takes unfair advantage or is detrimental to the distinctive character or repute of the mark INTEL.  

Withers & Rogers LLP trade mark attorney Tania Clark, said:

“This ruling will make many of the owners of famous trade marks sit up and take notice. It is certainly laying down the ground rules for the evidence required to prove dilution.

“To bring a successful challenge, owners of famous trade marks will not just have to prove that a link is being made in the mind of a consumer. They will now need evidence to show that the rival registration has affected or is likely to affect consumer behaviour resulting in damage or likelihood of damage to their business as a result. The nature and extent of this evidence is unclear at the moment.

“Despite the increased difficulty in exercising their rights to protection, owners of famous trade marks are likely to continue to bring actions against their rivals.  Famous and well known trade marks are internationally known, global brands, with a great deal of investment behind them, built up over many years.   Owners will want to protect their investment, regardless of cost or complexity.”