James Mellor QC appeared on behalf of Intel in front of the European Court of Justice. The ECJ handed down its judgment in November 2008 after Advocate General Sharpston gave her opinion in June of the same year. The ECJ addressed the issue of what is needed in order to establish the ‘link’ that is required for infringement under Article 5(2) of the Directive 89/104 as explained in Addidas-Salomon. The ECJ held that the link should be assessed globally and that all relevant factors should be taken into account. These factors include (but are not limited to) the degree of similarity between the conflicting marks, the closeness of the goods and services that the conflicting marks are being used in relation to, the strength of the earlier mark’s reputation, the degree of the earlier mark’s distinctive character and whether there exists a likelihood of confusion on the part of the public. The ECJ also confirmed that, in order to fall under Article 5(2), the later mark does not have to have taken unfair advantage of or already caused detriment; it only needs to be established that there is serious likelihood that the future use of the later mark will take unfair advantage or be detrimental to the earlier mark.
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