The word Intel looks very attractive for a trade mark. It implies intelligence because the reader will easily guess the second part of the word, and it is read and pronounced easily. So sooner or later it was going to happen. A Russian company seemingly built a strong defence: it first assumed the name Comintel Ltd and later, registered the trade mark Comintel, No 259074 in Class 38 (TV broadcasting, cable TV, e-communication).
Intel Corporation appealed against the registration of Comintel. The Patent Office rejected the appeal, which was not surprising. During the examination of the application the Office undoubtedly examined the designations Intel and Comintel for similarity and did not find any. It would hardly be expected that the Patent Office would go back on its previous thinking. Intel appealed the decision of the Chamber of Patent Disputes (part of the Patent Office) in court. The court satisfied the claims of Intel. That decision was appealed by the Patent Office but the Appeal Court upheld the decision at the first instance. The Patent Office appealed in the Cassation Instance Court, but the case was dismissed again.
When examining the case the courts argued that the key element in the controversial trade mark was the word Comintel (the trade mark also contained a figurative element that looked like a crescent moon). The word Comintel can be divided into two parts: Com" and Intel. In so doing, the second part visually and phonetically implies association with Intel Corporation because the letters in both trade marks are written in Latin characters in standard font. The figurative part of Comintel also brings up some association with Intel, which has an oval figure in its design (Registration No 198865). Based on that, the consumer may think that Comintel and Intel are abbreviated names of companies which provide services in the field of communications and further draw a conclusion that there are links between them.
Hence Intel won the conflict. The existence of Comintel company, however, remained outside the conflict and it still exists as well as the domain name comintel.ru. It seems that Intel lost further interest in punishing the infringer.
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Vladimir Biriulin |
Gorodissky & Partners
Russia 129010, Moscow
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25, stroenie 3
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