In its recent judgments in the Intel and TDK cases (nos. C-252/07 and C-197/07 respectively), the European Court of Justice (ECJ) laid down the conditions under which the owner of a reputed trademark can enjoy protection that goes beyond the trademark's listed goods.
In the Intel case, the ECJ laid down the relevant criteria for establishing whether a link exists between an earlier reputed mark and the later mark. This link is needed in order for the trademark to be further protected beyond the list of goods. The criteria include, for example, the similarity between the later mark and the reputed mark, or the similarity between the list of goods, the strength of the earlier mark's reputation and the degree of the earlier mark's distinctive character.
However, as a precondition for wider protection, the ECJ established that the owner of the trade mark must prove that there has been a change in the economic behaviour of the average consumer of the goods or services for which the earlier reputed mark was registered since the use of the later mark, or that there is a serious likelihood of this in the future.
The ECJ placed a significant burden of proof on the reputed trademark owner, whereby it would have to endure the usage of the later mark for some time in order to be able to carry out a consumer survey. Moreover, it may be feared that in a trademark infringement case, the national court will not grant interim measures and the outcome of the litigation itself is uncertain.
Two weeks after this strict measure was introduced, a further order came from another ECJ chamber in the TDK case, which somewhat overshadowed the initial measure. According to this later order, it is not necessary to demonstrate actual and present injury to the earlier mark: it is sufficient to produce evidence that enables the conclusion prima facie that there is a risk, which is not hypothetical, of unfair advantage or detriment in the future. This puts trademark owners into an easier situation compared to the Intel case. However, any risk that is not hypothetical can only be interpreted as a real and actual risk. This interpretation can easily lead to an obligation where trademark owners will have to prove that there will actually (not hypothetically) be a change in the economic behaviour of the average consumer regarding the class of goods or services of the trademark allegedly infringed.
The Intel case was connected to a proceeding for declaring the invalidity of a trademark, in which the ECJ interpreted Directive 89/104/EEC. In the TDK case, an application for registration as a Community trademark was the subject of the case according to Regulation No. 40/94. Nevertheless, the ECJ's statements in both cases can be considered a reference point for interpretation of both the Directive and the Regulation (which contain identical provisions), and also in trademark infringement disputes. (However, it is must be noted that the protection of reputed trademarks as contained in the Directive is not obligatory for the Member States of the EU; it is only an optional provision.)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
