Decision Nº O/037/06 from Intellectual Property Office - (Trade market), 1 February 2006
| Judge | Mr M Reynolds |
| Case Outcome | Application for declaration of invalidity, Section 47(2)(a) (citing Section 5(3)): - Failed. |
| Administrative Decision Number | O/037/06 |
| Date | 01 February 2006 |
| Registration Number | UK00002122181 |
| Court | Intellectual Property Office (United Kingdom) |
o/037/06
IN THE MATTER OF REGISTRATION NO 2122181
STANDING IN THE NAME OF CPM UNITED KINGDOM LIMITED
AND
IN THE MATTER OF A REQUEST FOR A DECLARATION
OF INVALIDITY THERETO UNDER NO 81496 BY
INTEL CORPORATION
IN THE MATTER OF Registration No 2122181 standing
in the name of CPM United Kingdom Limited
and
IN THE MATTER OF a request for a declaration of
Invalidity thereto under No 81496 by Intel Corporation
BACKGROUND
1. The trade mark INTELMARK was applied for on 31 January 1997. The
registration procedure was completed on 5 September 1997. The mark stands
registered in the name of CPM United Kingdom Limited (CPM) for a specification of
services which reads “Marketing and telemarketing services” (Class 35).
2. On 31 October 2003 Intel Corporation (Intel) applied for a declaration of invalidity
against this registration. Intel is the proprietor of a large number of UK and CTM
registrations. Brief details of the marks relied on are set out in the Annex to this
decision.
3. Intel says that it first began using the INTEL mark in the United Kingdom in 1970
both as its corporate name and as a trade mark. It goes on to say that:
“Prior to 31 January 1997, the INTEL mark was (and still is) used on or in
association with virtually all of Intel’s goods and services, including but not
limited to microprocessors, motherboards, memory devices, networking chips,
hardware and software for enabling wireless communications, and optical
components – building blocks that are the main “ingredients” of computers,
servers and networking and communications products to diverse industries.
As a result of the enormous efforts of Intel Corporation and its licensees in the
UK, the INTEL marks have appeared for many years prior to 31 January 1997
(and still appear) on the packaging of Intel Corporation’s products, products
containing components manufactured by Intel Corporation and on all manuals
therefor. This was (and is) part of Intel Corporation’s innovative campaign to
market its products directly to consumers.
Prior to 31 January 1997 the INTEL Marks were (and still are) also seen in the
UK in television and print advertising; in stores at the point of sale; in
catalogues; in promotional advertisements; in circulars and newspapers, on
billboards and on signs and in a variety of advertising on the Internet.
Prior to 31 January 1997 the INTEL Marks were (and still are) also
prominently displayed throughout Intel Corporation’s web site (accessible via
the intel.co.uk domain name) and in association with specific computer
software and Internet services. The INTEL Marks were (and are) seen by
consumers in the UK in a variety of contexts, including retail, gaming and web
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site creation/searching. Furthermore, the INTEL Marks were (and still are)
used prominently on a variety of printed materials available in the UK,
including investor fact sheets and annual reports.
Prior to 31 January 1997 Intel Corporation used (and continues to use) the
INTEL Marks in the UK on products outside the computer field. Prior to 31
January 1997 Intel Corporation sold (and continues to sell) a wide variety of
non-computer products branded with the INTEL Marks; clothing, desk
accessories, clocks, jewellery, dolls and novelty items. These are not merely
ancillary uses. Sales of these non-computer related items bearing the INTEL
Marks result in a significant source of income for Intel Corporation in the
UK.”
4. As a result it is said that the INTEL marks are famous and well known in the UK
and have a reputation with respect to the INTEL goods.
5. Objection is taken under two heads:
(i) under Section 47(2)(a)/5(3) – on the basis that use of CPM’s mark
without due cause would take unfair advantage of and be detrimental
to the distinctive character or repute of Intel’s earlier trade marks. The
objection is taken on the basis that these particular trade marks are
registered for dissimilar goods and services;
(ii) under Section 47(2)(b)/5(4)(a) in that use of INTELMARK would
amount to passing off.
6. Intel adds that it became aware of the CPM registration and use in or about April
2002.
7. CPM has filed a counterstatement denying the above grounds (an amended version
is dated 18 May 2004). CPM admits the reputation possessed by the INTEL mark as
of 1995 in relation to computers and computer-linked products but denies, or denies
the relevance of, the other claims made in the statement of grounds. Furthermore it is
said that use of the INTEL marks has not been co-extensive with the scope of Intel’s
registration.
8. In relation to the respective marks CPM admits that its mark is similar to INTEL
but denies that it is similar to INTEL INSIDE and device. It admits that dissimilar
goods/services are involved.
9. Further, “it is denied that in absence of any confusion arising between the
applicant’s and proprietor’s respective goods and services since the date the proprietor
used the INTELMARK in association with the goods/services the subject of its
registered trade mark since as early as early 1992, any such calling to mind or
establishing a link with the INTEL Marks (the fame associated with which is denied)
is denied.”
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