CMS Cameron McKenna has scooped Intel’s UK IP work from Howrey, advising the tech company in its Court of Appeal litigation with field marketing and telemarketing company CPM.
Intel followed IP partner Isabel Davies to Camerons after she left Howrey in August last year.
Davies and Intel went to the Court of Appeal to invalidate CPM’s trademark Intelmark in what is the first time that the issue of trademark dilution has been considered by the Court of Appeal.
Dilution occurs when a trademark is declared invalid because it is similar enough to an earlier mark to cause confusion.
High Court judge Mr Justice Patten had previously ruled that the Intelmark trademark was valid, despite saying that it would “bring to mind” Intel’s famous brand.
In his appeal judgment, Lord Justice Jacob referred three questions to the European Court of Justice (ECJ).
The main point revolved around that central question. Jacob LJ wrote: “Is a mere ‘bringing to mind’ of an earlier mark with a reputation enough to prevent a later registration?”UK judges have tended to answer ‘no’ to this query, but Jacob LJ saw sufficient doubt to refer the question to the ECJ in light of Intel’s worldwide reputation.
Davies said: “We’re delighted the case has established that Intel has a ‘huge reputation’ for certain goods and services and is unique for many goods or services.”
Camerons instructed 8 New Square silk James Mellor QC. CPM represented itself, instructing Mark Engelman of Hardwicke Building.