Case No. IP-2015-000152

Inc v CPM United Kingdom Ltd at paragraph 72). The Claimants in this case do not press a case of detriment to the repute of the mark, or tarnishment, at trial, as they no longer take issue with the quality of the Product.53.Both parties rely on Arnold J’s reliance at paragraph 92 of Red Bull GmbH v Sun Mark Limited and Sea Air & Land Forwarding Limited [2012] EWHC 1929 (Ch) on the description of dilution and unfair advantage, and general guidance on how to assess such injuries, provided by the CJEU in Case C-487/07 L’Oréal v Bellure NV [2009] ETMR 55, [2009] E.C.R I-5185 at paragraphs 39, 41 and 44:“39. As regards detriment to the distinctive character of the mark, also referred to as ‘dilution’ ‘whittling away’ or ‘blurring’, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, paragraph 29).…41. As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.…44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks in issue and the nature and degree of proximity of the goods or services concerned… the stronger the mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it.” That the use of the sign complained of is without ‘due cause’ 54.The burden is on the defendant to show that there is due cause, so although it is an element of infringement under section 10(3) TMA, it operates like a defence. The Defendant in this case does not seek argue that it has ‘due cause’ to use the sign complained of.