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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Intel inside Biointel not enough for Dilution

A more understandable decision in a case involving a well-known mark was given in the UK trade mark opposition between Retroscreen Virology and Intel Corporation (O-229-15).

Retroscreen had applied for the trade mark Biointel in respect of scientific and medical related services in Classes 35 and 42. The UK trade mark application was opposed by the US conglomerate based on its earlier UK registered rights in Intel (in classes 9, 16 and 38), together with its undoubted reputation in respect of microprocessors (and similar) (Section 5(3) of the Trade Marks Act 1994). The opponent put forward evidence that purported to show a link between their Intel products and Retroscreen’s claimed services. The applicant filed evidence showing the nature of its highly specialised services, as well as the widely accepted use of the word “intel” as an abbreviation for “intelligence”. On that basis, they argued that, in relation to the (Class 35 and 42) services claimed, their mark would be seen as referring to “Biological Intelligence” rather than to the well-known manufacturer of microprocessors (and their Intel products).

In relation to the mark applied for, the Hearing Officer (Mr Bryant) inclined towards the applicant’s view, rather than towards the opponent’s position that Biointel would be seen as a non-distinctive prefix Bio- plus a well-known trade mark, Intel.

Further, given the scientific/medical nature of the opposed Class 35 services and the differences between Retroscreen’s Class 42 services and the goods/services for which Intel had a reputation, Mr Bryant concluded that the necessary link between the two marks had not been established in relation to any of the ( Class 35 and 42) services applied for. The Hearing Officer therefore rejected Intel’s Section 5(3) ground of opposition. Since Intel had relied exclusively on this ground, Retroscreen’s UK trade mark application was allowed to proceed.

Given the gap that this decision could potentially cause in the edifice that Intel has built around its house mark, it would be a surprise if this decision were not appealed. It might even reach the Olympian heights of the European Court just as a similar case involving the trade mark Intelmark did over seven years ago (C-252/07).

Retroscreen also owns an International trade mark right for the trade mark Biointel in Classes 35 and 42 designating, amongst others, the CTM. It would be extremely surprising if this IR(CTM) were not opposed by Intel. Further, a different outcome before OHIM should certainly be expected.