Enforcing a trade mark when nobody's confused: where the law stands after L'Oreal and Intel

Abstract

This article reviews the extent to which European trade mark law permits a proprietor to enforce its trade mark against uses of signs or marks by third parties which do not cause consumer confusion, with a particular focus on the recent decisions of the European Court of Justice (ECJ) in Intel v CPM and L'Oréal v Bellure. Following L'Oréal, it is now clear that action can be taken under Article 5(1)(a) of the Trade Marks Directive (and equivalent national law) notwithstanding that a trade mark's essential function as a badge of origin is unimpaired. So long as some other function is affected, it does not matter if consumers are not confused by the third party use in question. Under Article 5(2), the prohibition against dilution is harder to rely upon after Intel, requiring evidence of a change in consumer behaviour. However, it is now easier to show that unfair advantage has been taken of a mark with a reputation, following L'Oréal. Article 5(1)(a) now offers wider protection than ever before for trade mark owners, and it may follow that certain uses of trade marks previously thought lawful are not now so. Article 5(2)—the unfair advantage limb at least—is now a significant weapon for trade marks with a reputation, and proprietors will be seeking to argue that they have such a reputation in order to benefit from it.