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

Matter Antartica Srl v. Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-47/06) [2007] it involved issues related to ‘likelihood of confusion’ with respect to a registered European Community trade mark. On March 30, 2000, the applicant company, Antarctica Srl, filed an application for the registration of a Community Trademark (CM) at the Office for Harmonization in the Internal Market (Trademarks, Designs and Models) (OHIM).

The application was filed under Council Regulation (EC) 40/94 (on the community trade mark) to register a figurative mark containing the word NASDAQ as a community trade mark. 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 Trademarks of June 15, 1957, modified.

On April 27, 2001, NASDAQ Stock Market Inc. filed an opposition appeal against the registration of the requested trademark with respect to all the products referred to in the registration application. The opposition was filed for the reasons set forth in article 8, paragraph 1, letter b), and 8, paragraph 5, of Regulation 40/94.

The OHIM Opposition Division dismissed 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 brand in Europe had not been adequately established. Subsequently, on August 24, 2004, the intervener filed an appeal with the OHIM against the decision of the Opposition Division.

By decision of December 7, 2005 (“the 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 wrongly dismissed 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 the notoriety of the NASDAQ trademark in the European Union to be proven for the services in classes 35 and 36 for which it had been registered, and that the use of the NASDAQ trademark by the applicant without due cause would take unfair advantage of or be detrimental to the distinctive character and reputation of the earlier mark. For these reasons, the Board of Appeal upheld the opposition.

The plaintiff company filed an appeal. He asked the Court of First Instance to annul the contested decision. He alleged a single ground of infringement of article 8.5 of Regulation 40/94 in support of his appeal for annulment of the contested Decision.

The Court considered the evidence and took into account the similarity of the disputed marks, as well as the importance of the reputation and high distinctiveness of the NASDAQ mark. It was considered that the intervener had proven the existence of a future risk, which was not hypothetical, of improper use by the plaintiff of the use of the trademark applied for, arising from the notoriety of the NASDAQ trademark.

Consequently, it was not appropriate, therefore, to annul the contested decision on this point. The applicant had not been able to present 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 was correct in concluding that there was insufficient justification for the applicant to use the NASDAQ sign. The sole plea alleging infringement of Article 8(5) of Regulation 40/94 had to be dismissed together with the application in its entirety.

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© RT COOPERS, 2007. This Information Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. Its sole purpose is to highlight general issues. Specialized legal advice should always be sought in relation to particular circumstances.

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