The questions were referred in a UK dispute in which Intel sought to stop the use of the mark Intelmark, which his owned by CPM, on the ground that it would dilute its famous mark.
Answering the questions from the Court of Appeal in London, the Court said that the fact that an earlier mark has a “huge reputation”; that its goods or services are dissimilar to those of the later mark; that the earlier mark is unique; and that for the average consumer “the later mark calls the earlier mark to mind” is “not sufficient” to establish that the use of the later mark “takes or would take advantage of, or is or would be detrimental to, the distinctive character or the repute of the earlier mark”.
The Court did say that the use of the later mark may be detrimental to the distinctive character of the earlier mark with a reputation “even if that mark is not unique”. It added that a “first use” of the later mark may suffice “to be detrimental to the distinctive character” of the earlier mark.
But it said that proof of this detriment “requires evidence of a change in the economic behaviour” of the average consumer buying the goods or services covered by the earlier mark, “or a serious likelihood that such a change will occur in the future”.
This is likely to require famous brand owners to provide survey or other evidence showing such a change in consumers’ “economic behaviour”.
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