Intel blocks registration of INTEL-PLAY

In Intel Corporation v Kirpal Singh Sihra (CH/2002/APP/0568), the High Court has allowed an appeal by Intel and prevented the registration of the trademark INTEL-PLAY. The court held that allowing the registration would dilute the strength of the plaintiff's famous INTEL mark.

Intel, a well-known US corporation, owns several registrations for the mark INTEL in relation to various forms of computer technology. It opposed Sihra's registration of INTEL-PLAY for "interlocking blocks being constructional toy puzzles". Intel contended that, pursuant to Section 5(2) of the Trademarks Act 1994 (corresponding to Article 5(1)(b) of the Community Trademark Directive), the registration should not be allowed because there was a likelihood that the public would confuse or associate INTEL-PLAY with its INTEL mark.

Intel further argued that, under Section 5(3) of the act (corresponding to Article 5(2) of the directive), the mark should not be registered because it would take "unfair advantage of, or be detrimental to, the distinctive character or the repute" of its prior registered trademark.

The hearing officer rejected Intel's arguments, holding that (i) the two parties' goods were not sufficiently similar for the purposes of Section 5(2) of the Trademarks Act; and (ii) there was little chance of dilution under Section 5(3) of the act. Intel appealed to the High Court.

The court allowed the appeal and blocked the INTEL-PLAY registration. It did not feel it necessary to alter the hearing officer's finding under Section 5(2), commenting that the notion of 'similarity' should not be stretched to such an extent that it protects "the unfair use of a well-established mark". However, the court overturned the earlier decision on Section 5(3), reasoning that the INTEL mark did have an established reputation and that INTEL-PLAY would feed off it, leading to greater sales of Sihra's products. It would, said the court "almost inevitably dilute the strength of the INTEL mark".

Imogen Fisher, Bird & Bird, London