Groundbreaking TM decision, in OUR favour

[domaingenius]

Court ruling hits trade mark rights

Published: November 27 2008 23:42 | Last updated: November 28 2008 10:56
Businesses could have more difficulty protecting their trade mark rights from rivals who encroach on their brand names in different markets, in the wake of a far-reaching decision in Europe’s top court on Thursday.
The case involved Intel, the US chipmaker, and CPM which had registered the trade mark Intelmark for marketing and telemarketing services. An English court referred the matter to the Luxembourg-based European Court of Justice to decide whether the link between Intel’s name and Intelmark was strong enough to impinge on the chipmaker’s trade mark rights.
The core issue was whether if a trade mark ”brought to mind” a more famous one, this amounted to sufficient grounds to disallow its use.
The EU court, however, ruled that the fact that the Intel name had a huge reputation, and that consumers would be reminded about it when the Intelmark name was mentioned did not demonstrate that Intelmark was taking unfair advantage.
Lawyers said that the ruling was ”bad news” for brand owners, whose protection would be diluted.
“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,” said Andy Millmore, partner at Harbottle & Lewis.
“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.”
“The evidential bar has been lifted with the need to prove at least a serious likelihood of injury to the trade mark,” said Joel Smith, partner at Herbert Smith.

[gingeman]

Intelmark has nothing to do with intel computers. Anyone can see that imho. There must be hundreds of unrelated brands using a suffix of intel, as it is an abreviation of intelligent amongst other things. The fact that it may bring to mind intel is subjective and a terrible argument. Correct decision if the domain was being used for a legit marketing company I would say.

[PRED]

whos got balls of steel?

anyone fancy having a new marker pen business?

microsoftmark.com is free to reg rofl

ps: kidding. don't do it!

[domaingenius]

I dont think that the decision will have much of a bearing on UDRP, more
on trademark claims against people with domains that might otherwise
infringe. I have up fakeXXXXXX.com the other week but now I would
keep it and tell them to get lost.

DG

[Yusio]

I wouldn't really consider this groundbreaking. It's just that the court finally made the right decision for once.

[domaingenius]

I wouldn't really consider this groundbreaking. It's just that the court finally made the right decision for once.

In which cae (a) you dont understand law (b) you are not concerned with
European laws. It actually IS groundbreaking law and perhaps you care
to advise why you say it is NOT ??

DG

[Makis77]

Thats why europeans should seek to bring a case to european courts by all means

[domaingenius]

The below is from the Times and may give some people
more of an idea which domains they can safely reg;
Intel ruling restricts legal protection for famous brands
Michael Herman

Companies will find it harder to protect well-known brands from being exploited by other businesses following a landmark ruling by Europe’s highest court today.

In a case brought by Intel, the computer giant, the European Court of Justice (ECJ) significantly reduced the circumstances in which businesses can prevent others from creating new brands similar to their own.

The computer chip manufacturer had attempted to stop a marketing company using the brand "Intelmark" in the UK but the court ruled that a mere resemblance between two brands was not enough to refuse a trademark.

Although the case will be referred back to the UK's Court of Appeal to decide the merits of Intelmark's application, the general legal principles laid out in the ECJ's ruling will govern future decisions by the Intellectual Property Office, which grants or denies trademarks to British companies.
Related Links

* Piracy worse in US than China

* Court urges greater software protection

* Supreme Court weakens patent rights

Businesses hoping to prevent others from using similar brand names will now have to demonstrate either that they have already suffered damage as a result of the other brand or that there is a reasonable prospect that they will suffer damage in the future.

The ruling, which lawyers said was damaging for big companies, puts powerful brands on a back foot as they must now convince a court they have suffered a loss.

Sahira Khwaja, an intellectual property lawyer at Lovells, said: “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, a partner at Herbert Smith, said that the court had set a high hurdle. “The big message is that superbrands are denied absolute protection and the ECJ has reined in their monopoly of famous names," he said.

Mr Smith said that the situation was further complicated because brand erosion is extremely difficult to quantify and generally occurs over a number of years.

Although Intel's claim was against a company that operated in a different sector, the court said that the same legal test should be used in situations in which the companies are direct competitors.

However, Mr Smith said that courts were likely to be more sensitive to protecting established brands if, for instance, a new computer manufacturer attempted to use the word "apple" in its marketing.

Paul McClenaghan, an IP lawyer at Stephenson Harwood, said: "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."

[Yusio]

In which cae (a) you dont understand law (b) you are not concerned with
European laws. It actually IS groundbreaking law and perhaps you care
to advise why you say it is NOT ??

DG

Because as someone stated in the first few posts... Intel is an abbreviation for Intelligence. And IntelMark has nothing to do with the computer chip company Intel.

[domaingenius]

Because as someone stated in the first few posts... Intel is an abbreviation for Intelligence. And IntelMark has nothing to do with the computer chip company Intel.

Doh !. What the F has that got to do with whether or not this is a ground breaking ruling and you clearly don't know what you are talking about.

DG

[SGBoise]

From my understanding you can use the same name as long it's not in the same industry.

For example:
Delta - the airlines
Delta - the faucet

[domaingenius]

From my understanding you can use the same name as long it's not in the same industry.

For example:
Delta - the airlines
Delta - the faucet

Yep thats it. Not only that if they want to sue you for trademark
infringement they have to proof a loss.

DG

[SGBoise]

This case seams like a no brainer. If two companies can have the same same name then one should be able to have variations of the name.

Think I will start a marketing company called ToyotaHonda. See how far it gets me.