Intellectual Property Law – European Community Trademark – ‘Risk of Confusion’

Case of Antartica Srl / Office for Harmonization in the Internal Market (Trademarks, Designs and Models) (OHIM) (Case T-47/06) [2007] it involved “likelihood of confusion” issues with respect to a European Community trade mark. On March 30, 2000, the applicant company, Antarctica Srl, submitted an application to register a Community Trademark (CTM) with the Office for Harmonization in the Internal Market (Trademarks and Designs) (OHIM).

The application was filed under Council Regulation (EC) 40/94 (on the Community Trademark) to register a figurative trademark containing the word NASDAQ as a Community Trademark. The products for which registration was requested belonged to Classes 9, 12, 14, 25 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Registration of Marks of June 15, 1957, as amended.

On April 27, 2001, NASDAQ Stock Market Inc initiated opposition proceedings against the registration of the trademark applied for in respect of all the products mentioned in the registration application. The opposition was made for the reasons described in Article 8 (1) (b) and Article 8 (5) of Regulation 40/94.

OHIM’s Opposition Division rejected the opposition. The opposition was rejected on the grounds that there was no ‘likelihood of confusion’ within the meaning of Article 8 (1) (b) of Regulation 40/94. Furthermore, the reputation of the earlier mark in Europe was not duly justified. Subsequently, on August 24, 2004, the intervener filed a cassation appeal with OHIM against the decision of the Opposition Division.

By decision of 7 December 2005 (“Contested decision” in this case), the Second Board of Appeal of OHIM annulled the decision of the Opposition Division on the grounds that it had erroneously rejected the opposition by basing its decision on the fact that the conditions for the application of Article 8 (5) of Regulation 40/94 had not been fulfilled.

For its part, the Board of Appeal considered that the reputation of the NASDAQ trademark in the European Union for the services of classes 35 and 36 for which it had been registered was proven and that the use by the plaintiff of the NASDAQ trademark without due cause it would unfairly take advantage of or damage the distinctive character and reputation of the earlier mark. For these reasons, the Board of Appeal upheld the opposition.

The requesting company requested an appeal. It claimed that the Court of First Instance should annul the contested decision. It raised a single ground of infringement of Article 8 (5) of Regulation 40/94 in support of its action for annulment of the contested decision.

The Court examined the evidence and took into account the similarity of the brands at issue, as well as the importance of the reputation and highly distinctive character of the NASDAQ brand. It was considered that the intervener had established the existence of a future risk, which was not hypothetical, that the applicant would unfairly benefit from the use of the trademark applied for from the notoriety of the NASDAQ trademark.

Therefore, it is not necessary to annul the contested decision on this point. The applicant had not been able to provide a convincing reason to justify the conclusion that its use of the NASDAQ trademark would be based on just cause within the meaning of Article 8 (5) of Regulation 40/94. In these circumstances, the Board of Appeal had been correct in concluding that there was no good cause for the applicant to use the NASDAQ sign. The single plea based on the infringement of Article 8 (5) of Regulation 40/94 had to be dismissed together with the appeal in its entirety.

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© RT COOPERS, 2007. This Information Note does not provide an exhaustive or complete statement of the law related to the topics discussed, nor does it constitute legal advice. Its aim is only to highlight general issues. Specialized legal advice should always be sought in relation to particular circumstances.

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