## Facts

- Intel Corporation owned UK registrations for the word mark “INTEL” covering computers, microprocessors, and related goods and services, and the mark had a very strong reputation in the United Kingdom.
- CPM United Kingdom Ltd owned a UK registration for the word mark “INTELMARK” in Class 35 for “marketing and telemarketing services,” effective from January 31, 1997.
- The parties’ goods and services were treated as dissimilar.
- Intel sought a declaration that CPM’s “INTELMARK” registration was invalid under the UK provision implementing EU rules protecting marks with a reputation against unfair advantage or detriment, even for dissimilar goods/services.
- The case proceeded without a separate passing-off claim and on the basis that CPM had not used “INTELMARK” before registration.
- The Trade Marks Registry rejected Intel’s invalidity application, and the High Court (Chancery Division) dismissed Intel’s appeal.

## Issues

1. What is required to show a “link” in the mind of the average consumer between a reputed earlier mark and a later mark used for dissimilar goods or services, including whether mere “bringing to mind” is sufficient.
2. What must be proven to establish detriment to distinctive character (dilution), including whether proof of economic harm (or a serious likelihood of it) is required.
3. Whether unfair advantage or detriment can be inferred from the earlier mark’s strong reputation and alleged uniqueness combined with consumer association, absent evidence of likely harm.

## Decision

- The Court of Appeal did not decide whether “INTELMARK” should be invalidated.
- The Court held that the meaning and evidentiary thresholds of the EU-law standard for reputed marks (including “link,” “unfair advantage,” and “detriment”) were unclear.
- The Court stayed the domestic proceedings and referred questions to the Court of Justice of the European Union for a preliminary ruling.

## Legal Principles

- Where the outcome turns on the interpretation of EU trade-mark provisions, a national appellate court may stay proceedings and seek an authoritative interpretation through the preliminary-ruling procedure.
- Protection for a mark with a reputation against use on dissimilar goods/services depends on established EU-law concepts (including “link,” “unfair advantage,” and “detriment”) whose content must be applied consistently across Member States.
- A consumer’s mental association between marks (“bringing to mind”) may be relevant to a “link,” but whether that association alone satisfies the statutory harm requirements was treated as an open EU-law question requiring clarification.

## Conclusion

The Court of Appeal treated Intel’s challenge as raising unresolved EU-law questions about when a later mark used for dissimilar services can be barred for taking unfair advantage of, or causing detriment to, a reputed earlier mark, and it stayed the case while obtaining a preliminary ruling on the governing standards.


Intel Corp. Inc. v. CPM United Kingdom Ltd., [2007] EWCA (Civ) 431 (Eng.)