Intel & L'Oreal: The Story So Far

1. Intel & L’Oreal - the story so far Simon Malynicz 7 April 2009

2. ECJ references • Role of Member States/Commission • Acte clair • Timings of ECJ references • UKIPO website - “Policy” and lobbying

3. Article 4(4)(a) TMD “….where the earlier trade mark has a reputation in the Member State concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”

4. 3 Types of Harm • Unfair advantage of distinctive character/repute (“free-riding”) • Detriment to distinctive character (“dilution”) • Detriment to repute (“Tarnishment”) ….or are there four?

5. Intel: the facts • INTEL for microprocessors • “Massive” reputation • CPM’s junior mark: INTELMARK for marketing and telemarketing services

6. 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]

7. The requirements for showing the “link” are quite relaxed • Mere calling to mind sufficient • Adidas v. Fitnessworld “plus” • Similarity of marks • Similarity of goods • Strength of reputation • Confusion (if present)

8. Aspects of proof - a mixed bag • No need for actual/present harm • Without due cause comes after harm

9. 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 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.”

10. 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

11. …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

12. 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

13. 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

14. 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

15. 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

16. 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?

17. Thank you Simon Malynicz, Hogarth Chambers Tel: 020 7404 0404 simon.malynicz@hogarthchambers.com