Brand Trade Marks Under Threat After European Court Ruling

01 December 2008

LUXEMBOURG: Brands and businesses could face greater challenges in defending their trademarks from competitors, after the European Court of Justice ruled in favour of marketing services firm Intelmark in its dispute with computer chip titan Intel.

The case, referred to the ECJ by the English courts, centred around the question of whether the similarity between Intelmark's name and Intel's effectively violated the US giant's trade mark.

Ultimately, the ECJ said that while Intel's name was widely-known, and may be "brought to mind" when consumers heard of Intelmark, that did not mean the marketing firm was taking "unfair advantage". 

Following the ruling, lawyers predict that brand owners' ability to protect their properties will diminish, given that similarity between an existing trademark and another is insufficient to prevent the latter's use.

Says Andy Milmore, a partner at Harbottle & Lewis: "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."

Data sourced from Financial Times; additional content by WARC staff