Trade mark law seminar on Intel decision of the ECJ

1. If you’ve got Intel inside
Intel v CPM (UK) Ltd
Trade mark protection in the Benelux in view of the ECJ’s Intel decision
2 December 2008, London
Gino van Roeyen, Banning N.V.
E: g.vanroeyen@banning.nl
I: www.banning.nl

2. Flashback with a question and an answer:
who, what, when?
 Question: "… if … the marks have similarities, but no member
of the public would be confused as to the origin, but some
members of the public say: 'Well, that has a passing similarity. It
brings to mind the company A's mark but I know that they are
nothing to do with each other.' Would that be an infringement?“
 Answer: "Well I think it protects his actual trade, because if the
relevant part of the public thinks of trademark A when seeing
trademark B, the effect of that is, in fact, loss of exclusivity and
dilution. So, I think the Benelux concept of association includes
that danger."

3. 1995
Q = Laddie A = Gielen Infringement confusion

4. Laddie on Trade Mark Infringement
solely based on association
‘Nevertheless the natural inclination to come to a conclusion
which would further harmony on this issue is not so strong
that I am prepared to agree that a new millstone round the
neck of traders has been created when that is not my view.’

5. Gielen (case note Court of
Appeal's Intel decision, IER
2007, p. 215-216):
'The English remain to have difficulty with trade mark protection. One
tastes this once again when reading this decision edited by Robin Jacob.
(…)(…) Of course, once it has been measured that there is an association
to a sufficient extent, a judge needs to establish whether detriment to the
distinctive character is likely. Jacob finds ‘likely’ not enough, because the
detriment to the distinctive character must be ‘really likely’. He wonders
inter alia if there needs to be an influence on the economic behaviour of
the consumers. I don't think so. The protection against dilution is aimed at
avoiding that the original trade mark is not able any longer to immediately
attract the attention of the public, that it will lose its uniqueness and
accordingly its value. That's why protection against dilution is granted, not
to protect the consumer against deception or confusion. I hope that the
ECJ will clarify this once again. In my view Advocate General Jacobs in his
worth reading Opinion to Adidas/Fitnessworld had a much better
apprehension.' (disclaimer translation in my own words, GvR)

6. Some historical background with regard to dilution
as a foundation for trade mark infringement in the
Netherlands and the Benelux:
 Unfair competition: causing risk of confusion
 Dutch Trade Mark Act 1893: focus on the exclusive right of
trade mark owner to use the trade mark to distinguish his goods
(confusion is the backbone of the protection; mindset: only
possible with regard to the use of the same or a similar trade
mark for identical or similar goods)
 Protection of the public, trade mark owner and trade mark
against risk of confusion

7. Confusion
 Direct: With regard to the trade marks or goods involved (as a
result of which consumers err in choosing the product that they
want)
 Indirect: With regard to the origin of goods involved (consumers
perceive those goods as originating from one source because
the same or a similar trade mark is used on them, whilst in
reality the goods originate from different, independent sources)

8. Dilution?
 Concept of such protection might not be included in the
Dutch Trade Mark Act 1893, but from a formal point of view
similarity of goods was not a condition for a protection of
trade marks against confusion by use of the trade mark for
non similar goods
 Protection of (use of) well known trade marks for non-
similar goods based on tort law in general: art. 1401 Dutch
Civil Code (old)

9. Examples
 Chevrolet for cars / Chevrolet for perfumes (held
actionable by CoA The Hague in 1952)
 Lucky Strike for cigarettes / Lucky Strike for chewing gum
(held not actionable by the Dutch Supreme Court in
1954)
 Kodak for films / Kopak for potatoes (held not actionable
in 1960 by CoA The Hague)

10. Adoption of dilution in trade mark law
advocated by practitioners and scholars
 Dilution of the distinctive character of trade marks = injury /
prejudice
 A trade mark can be diluted even if there is no confusion
 Trade mark law should protect trade mark (owner) against such
injury, even if there is no risk of confusion
 Especially advocated for well known trade marks and use of a
similar sign for non-similar goods

11. "Legal Logic"
 Confusion Covers Dilution If There Is Confusion
 If There Is Confusion The Dilution Needs No Special Attention
 There Can Be Dilution Without Confusion (for example in case
of use for completely different goods / use of sign that is only
slightly similar)

12. 1971: entry into force Benelux Trade Mark Act
Article 13A Benelux Trade Mark Act:
Without prejudice to the possible application of ordinary civil law in
matters of civil liability, the proprietor of a mark may, by virtue of his
exclusive right, oppose:
 any use made of the mark or of a like symbol for the goods or
services in respect of which the mark is registered, or for similar
goods or services
 any other use, in economic intercourse, of the mark or of a like
symbol made without a valid reason under circumstances likely
to be prejudicial to the proprietor of the mark

13. General opinion in the Benelux
Art. 13 par. 2 protects all trade marks against
dilution = reputation is not an explicit condition
mentioned in the par. 2 formula (but held
relevant for the appreciation of the alleged
prejudice)

14. The Benelux: Trade Mark Heaven on Earth
+ Benelux Court Union (1983) case: similarity between trade mark
and sign if there is such a resemblance (auditive, visual and
conceptual) that there is possibility that it will provoke associations
between the sign and the trade mark

15. Pièce de resistance of the 'old' Benelux dilution law:
Benelux Court case CLAERYN / KLAREIN (1975)
 Valid reason: Colgate – we choose Klarein because this word fits its
task so wonderfully with regard to a detergent – Klarein is a contraction
from Klaar (which means clear and has also a connotation with ready)
and Rein (which clean).
Benelux Court: this is not enough!
 Is this use likely to be a prejudice to the
proprietor of the mark? Dutch Supreme Court:
Can the harm be that the similar sign appeals
in such a way to the sensory perceptions of the
relevant public that the trade mark for the
goods for which it has been registered is hit in
its 'pulling power'? Benelux Court: Yes, injury is
possible, a Klarein detergent could take away
the 'appetite' of customers for a Claeryn
geneva!

16. And what about cases where there is no
risk of confusion, but the goods are
similar?
Dutch Supreme Court (1977): no risk of confusion, but protection
(association)!

17. Other sounds too: Court
of Appeal Amsterdam
Jeep case (1980)
 Loss of uniqueness and the ability of a trade mark to create
associations is inherent to the use of that trade mark for non-similar
goods and is – as such – not enough to accept the possibility of a
prejudice to the trade mark according to art. 13 A par. 2
 Another opinion would make this provision meaningless and it would do
no justice to the contrast between this provision and art. 13 A par. 1

18.  Does the given use of Jeep for ladies garments injure the Jeep
trade mark? Does this use have a harmful effect on the ‘pulling
power’ of a trade mark?
 Goods are not similar at all + no other car manufacturers
produce ladies garments: most unlikely that the public would
think of such a combination; No chance of a risk of confusion at
all
 Association not enough: the public’s impression of a legal,
financial or economical connection is in theory always possible if
the same trade mark is used for non-similar goods, accordingly
an infringement injunction would always be possible (floodgate
argument)
 Relevant public is so different that it is not plausible at all that
the ‘pulling power’ of the Jeep car trade mark would be
weakened by the use of Jeep as a trade mark for garments. In
the world of cars Jeep is a distinct trade mark that prevents that
its ‘pulling power’ will be injured by the use for garments

19. Art. 13A par. 2 replaced by the implementation
of art. 5 par. 2 Trade Mark Directive
 The protection of art. 5 par. 2 is (only) granted to an earlier trade mark with a
reputation in the Member State
 The Benelux initially did not implement the risk of confusion criterion literally,
but sticked to the association language
 Where art. 13A par. 2 gave a general protection against a prejudice (harm) to
the proprietor of a mark, (the implementation of) art. 5 par. 2 only grants a
specific protection: against use that takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of a trade mark
 The use needs to be without due cause
 The advantage derived from the use of the trade mark must be unfair
 For art. 13 A par. 2 a risk of prejudice sufficed, while the text of art. 5 par. 2
seemed to demand an actual prejudice: a heavy burden of proof
 Should we give protection if the trade mark owner proves that there is a
serious risk that a relevant injury will occur in the future?
 Wording of art. 5 par. 1: no protection against use of trade mark for non-
similar goods which provokes confusion: protection has to be derived from
art. 5 par. 2, but only for trade marks with a reputation?

20. Adidas, Adidas and Adidas
Marca / Adidas (2000)
No protection based on art. 5 par. 1 sub b Directive against
dilution based on pure association if there is no confusion
Adidas / Fitnessworld (2003):
Trade marks with a reputation are protected by art. 5 par. 2
Directive against dilution caused by use of such trade mark for
similar goods, although the text only mentions non-similar
goods.
Adidas / Marca & H&M (2008)
Scope of protection not restricted by need to keep free

21. But: District Court The Hague, July 5, 2006
(Adidas/Nike): ruled in favour of Nike
No infringement according to art. 13 A par. 1 under a Benelux
Trade Mark Act (art. 5 par. 2 Trade Mark Directive) because Nike
has a valid reason for its decorative use of two stripes, let alone the
question whether Nike’s use of two stripes takes unfair advantage
of or is detrimental to the distinctive character or the repute of the
three stripes trade mark.

22. A few other recent dilution cases
 XS4ALL/XS4COMPONENTS – Court of Appeal Amsterdam (1999) –
because the typical descriptive meaning that is included in XS4ALL
(acces for all) misses in XS4Component, this is an indication that unfair
advantage is taken from the reputation of XS4ALL
 Moet / Xenos – Presiding Judge District Court The Hague (2000): use
colours and lay out of Moët & Chandon bottles for candles can be
detrimental to the reputation of the champagne trade mark
 Jaguar/Pinocchio – Court of Appeal 's-Hertogenbosch (2003) – the use
of Jaguar for shoes takes unfair advantage of the reputation of Jaguar
for cars
 Windows/LindowsOS – Presiding Judge District Court Amsterdam
(2004) – the use of LindowsOS takes unfair advantage from the
distinctive character and reputation of Windows, because LindowsOS is
presented as an alternative for Windows.

23.  XS4ALL/XS4U – Presiding Judge District Court Arnhem (2004):
use of XS4U for erotic services and products can be detrimental
to the reputation of the XS4ALL trade mark
 Hugo Boss/Reemtsma – Court of Appeal Brussels (2005) –
because of the luxury image of Hugo Boss the court assumes
that Reemtsma is using the trade mark Boss for tobacco products
to radiate the luxury imago of Hugo Boss on the tobacco products
 Carrera/Carrera Autoschade - Court of Appeal 's-
Hertogenbosch (2005): no detriment to distinctive character,
because there is no risk that the relevant public will link the
parties (commercial relationship)
 Ipko/Marie Claire – Court of Appeal The Hague (2006): due to
the partly similar target group, the identity of the conflicting
marks, and the same way of presenting the goods concerned
(tights vs magazines)
 Buldog/The Bulldog – District Court The Hague (2006): that the
use of a sign for pornsites (www.buldog.com) is not likely to be
detrimental for a trade mark (The Bulldog) which has been set up
from a coffeeshop. The Bulldog misjudges that its trade follows
from a situation that is tolerated while Buldog’s trade is legal
everywhere

24. Comments on Intel and case application

26. Questions?
Gino van Roeyen
T: +31 73 6927705
F: +31 73 6927787
E: g.vanroeyen@banning.nl
I: www.banning.nl