INTEL DOCTRINE

The Intel Doctrine is a Mere Confirmation of the Sabel v Puma Doctrine

The Intel Doctrine is a Mere Confirmation of the Sabel v Puma Doctrine

Introduction

1 By order of 29 June 1995, received at the Court on 20 July 1995, the Bundesgerichtshof (Federal Court of Justice) referred to the Court for a preliminary ruling under Article 177 of the EC Treaty (Carboni 1998, 107-9) a question on the interpretation of Article 4(1)(b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1, hereinafter 'the Directive'). That question was raised in proceedings between the Dutch company SABEL BV (hereinafter 'SABEL') and the German company Puma AG, Rudolf Dassler Sport (hereinafter 'Puma') concerning an application to register the IR mark 540 894, in Germany, inter alia for goods in classes 18 'Leather and imitation leather, products made therefrom not included in other classes; bags and handbags' and 25 'Clothing, including tights, hosiery, belts, scarves, ties/cravats and braces; footwear; hats'.

Puma lodged opposition to the registration of that mark on the ground, in particular, that it was the proprietor of the pictorial mark which was of earlier priority and registered in Germany (under No 1 106 066), inter alia for 'leather and imitation leather, goods made therefrom (bags) and articles of clothing'. The Deutsches Patentamt (German Patent Office) considered there to be no resemblance for the purposes of trade-mark law between the two marks and rejected the opposition. Puma therefore appealed to the Bundespatentgericht (Federal Patents Court) which partially upheld its application and held that there was a resemblance between the two marks with respect to SABEL's goods in classes 18 and 25, which it regarded as being identical or similar to the goods on the list of articles covered by the Puma mark. SABEL then appealed to the Bundesgerichtshof for annulment of the decision refusing its application.

The Bundesgerichtshof provisionally considered that, applying the principles applied hitherto under German law for determining whether there is a likelihood of confusion for trade-mark purposes, no such likelihood existed as regards the two marks in question. The criteria applied by the Bundesgerichtshof in order to reach that provisional conclusion are, in essence, as follows: - In determining whether there is a likelihood of confusion, the court must focus on the overall impression made by the respective signs. It is not permissible to isolate one element out of a graphic ensemble and to restrict examination of the likelihood of confusion to that element alone. However, an individual component may be recognized as having a particularly distinctive character which characterizes the sign as a whole, and, consequently, a likelihood of confusion may be found to exist if another party's sign resembles the whole of the sign so characterized. Even in such a case, however, the two signs must be compared in their entirety and the comparison must not be confined to their individual (characterizing) ...