Intel & the AG Opinion in
L’Oreal
Simon Malynicz
24 March 2009
Intel: the facts
• INTEL for microprocessors
• “Massive” reputation
• CPM’s junior mark: INTELMARK
for marketing and telemarketing
services
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Dilution is expressly acknowleged, even
defined
•
“Dilution” = “whittling away” = “blurring”
•
“…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.”[29]
The requirements for showing the “link” are
quite relaxed
•
Mere calling to mind sufficient
•
Adidas v. Fitnessworld “plus”
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Similarity of marks
Similarity of goods
Strength of reputation
Confusion (if present)
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Aspects of proof - a mixed bag
•
No need for actual/present harm
•
Without due cause comes after harm
What needs to be proved?
•
•
Mere calling to mind sufficient, but the stronger
the link, the more likely there is harm
The “more unique” the more likely there is harm
A first use may cause harm
•
BUT: ”it follows that proof that the use of the later mark
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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.”
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A change in the economic behaviour what is it?
•
“Change” - something measurable, something
appreciable
•
“Economic behaviour” - transactional decisions, anything
else?
•
“Consumers of the earlier mark” - not the later mark, not
the public at large
•
“Causative” - not due to economic downturn, or tired
advertising
…and how do you prove it, for goodness
sake?
•
“serious likelihood” = more than hypothetical, according
to Gielen: see the TDK reasoned order
•
An appreciable, measurable effect on my business or a
risk thereof - e.g. a change in my advertising strategy?
•
Market research surveys, particularly in the online
environment
•
Clicktime measurement
•
Cross-pollination? Evidence of activities of C and D
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L’Oreal - The AGO speaks on
Question 5
NB, only relates to the product
packaging, not price
comparison lists
This case about unfair
advantage, not dilution
Almost all of the Court of Appeal factors were
irrelevant
Damage to essential function, tarnishing,
blurring, deprivation of sales, reward etc
not important
This provision is all about benefit to the
defendant, not harm to the claimant
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The defendant’s marketing is “made easier” as a
result of the use
See the VIPS case before the CFI
You need to show some sort of “boost”
Note - he had said, in the context of the
earlier questions that “free-riding on the
coattails of the famous mark” was an
expression that was of little assistance
Has to induce consumers to buy, because
of positive qualities, but need not be the
only inducement
Relationship to “without due cause”
You have to take account of the “without due
cause” requirement.
“…it must be concluded that the adjective ‘unfair’
comes into play only where due cause for the use
of such sign is relied on and demonstrated.”
So analysis seems to be:
Show a mark is used for its positive qualities, if
so, then prima facie the use is unfair
If that is the only reason consumers buy the
goods, then it is unfair and that is the end of the
matter
If it is not the only reason, and no “due cause”
argument, then whether unfair is a matter of
fact and degree for the national court
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Some comments
He is probably wrong to introduce “without due
cause” into the analysis of whether unfair - seems
contrary to Intel as well as the language of the
provision
However, he seems to be right to emphasise that
“without due cause” needs to be taken proper
account of (though this was not a referred
question)
Without due cause - the next battleground?
Thank you
Simon Malynicz, Hogarth Chambers
Tel: 020 7404 0404
simon.malynicz@hogarthchambers.com
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