Advocate General Sharpston has given her Opinion today in Case C‑252/07 Intel Corporation Inc. v CPM United Kingdom Limited, a reference to the European Court of Justice for a preliminary ruling from the Court of Appeal for England and Wales.

Intel owned a number of UK and Community trade marks consisting of or including the word INTEL, registered in classes 9, 16, 38 and 42 for computers and computer linked goods and services. The referring court found that INTEL had a "huge reputation" as a trade mark at the time this dispute arose. The mark was described as "an invented word with no meaning or significance beyond the products which it identifies", and as being "unique"’ in that it had not been used by anyone else for any goods or services. CPM owned the UK trade mark INTELMARK, registered in 1997 in class 35 for "marketing and telemarketing services" (it was coined, according to the referring court, from the initial syllables of the phrase ‘integrated telephone marketing’).

Intel sought a declaration, on the basis of the national provisions transposing Article 4(4)(a) of the Directive, that CPM’s mark was invalid. Following dismissal at first instance and by the High Court, the Court of Appeal sought guidance from the ECJ on the following questions:

"(1) For the purposes of Article 4(4)(a) of [the Directive], where:

(a) the earlier mark has a huge reputation for certain specific types of goods or services,

(b) those goods or services are dissimilar or dissimilar to a substantial degree to the goods or services of the later mark,

(c) the earlier mark is unique in respect of any goods or services,

(d) the earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the services of the later mark,

are those facts sufficient in themselves to establish (i) “a link” within the meaning of paragraphs 29 and 30 of [Adidas I] and/or (ii) unfair advantage and/or detriment within the meaning of that Article?

(2) If no, what factors is the national court to take into account in deciding whether such is sufficient? Specifically, in the global appreciation to determine whether there is a “link”, what significance is to be attached to the goods or services in the specification of the later mark?

(3) In the context of Article 4(4)(a), what is required in order to satisfy the condition of detriment to distinctive character? Specifically, [(i) does] the earlier mark have to be unique, (ii) is a first conflicting use sufficient to establish detriment to distinctive character and (iii) does the element of detriment to distinctive character of the earlier mark require an effect on the economic behaviour of the consumer?".

"For the purposes of Article 4(4)(a) of Council Directive 89/104/EEC:

– the fact that the earlier mark would be brought to mind by the average consumer when he or she encounters the later mark used for the goods or services of the later mark is in principle tantamount to the establishment of a link in the mind of the relevant public within the meaning of paragraphs 29 and 30 of the Court’s judgment in Case C-408/01 Adidas-Salomon and Adidas Benelux;

– the facts that the earlier mark has a huge reputation for certain specific types of goods or services, that those goods or services are dissimilar to the goods or services of the later mark and that the earlier mark is unique in respect of any goods or services are not sufficient in themselves to establish either such a link or unfair advantage or detriment within the meaning of that article;

– in order to decide whether a link or unfair advantage or detriment is established, the national court must take account of all factors relevant to the circumstances of the case;

– the nature of the goods or services may be relevant to determining whether there is a link, but an absence of similarity between the product areas concerned cannot be taken to imply the absence of such a link, and belief in an economic connection between the marks is not a necessary criterion;

– in order to satisfy the condition of detriment to distinctive character, (i) the earlier mark does not have to be unique, (ii) a first conflicting use is not in itself sufficient and (iii) an effect on the economic behaviour of the consumer is unnecessary".