The scenario of Antartica Srl v Office for Harmonisation in the Internal Current market (Trade Marks and Patterns) (OHIM) (Case T-47/06) [2007] associated concerns relating to the ‘likelihood of confusion’ with regards to a European Local community trade mark. On the 30th of March 2000, the applicant corporation, Antarctica Srl, submitted an application to sign up a Local community Trade Mark (CTM) at the Office environment for Harmonisation in the Inner Market place (Trade Marks and Layouts) (OHIM).

The software was created under Council Regulation (EC) 40/94 (on the Neighborhood trade mark) to register a figurative mark containing the term NASDAQ as a CTM. The goods for which registration was sought fell within just courses 9, 12, 14, 25 and 28 of the Wonderful Agreement about the Intercontinental Classification of Items and Companies for the Purpose of the Registration of Marks of the 15th of June 1957 as amended.

On the 27th of April 2001, the NASDAQ Stock Current market Inc introduced opposition proceedings in opposition to the registration of the mark applied for in respect of all the goods referred to in the software for registration. The opposition was built on the grounds outlined in Report 8(1)(b) and 8(5) of Regulation 40/94.

The Opposition Division of OHIM rejected the opposition. The opposition was rejected on the grounds that there was no ‘likelihood of confusion’ in just the that means of Short article 8(1)(b) of Regulation 40/94. In addition, the name of the before mark in Europe had not been thoroughly substantiated. Subsequently, on the 24th of August 2004, the intervener brought an attractiveness just before OHIM towards the Opposition Division’s decision.

By a determination of the 7th of December 2005, (“the Contested Decision” in this situation), the Second Board of Appeal of OHIM established aside the Opposition Division’s decision on the ground that the latter had wrongly rejected the opposition by basing its decision on the truth that the situations for the software of Post 8(5) of Regulation 40/94 had not been fulfilled.

For its aspect, the Board of Appeal held that the track record of the trade mark NASDAQ in the European Union for the companies in classes 35 and 36 for which it experienced been registered experienced been substantiated, and that the applicant’s use of the mark NASDAQ without the need of owing trigger would take unfair gain of, or be harmful to, the distinctive character and popularity of the previously mark. For these motives the Board of Attractiveness upheld the opposition.

The applicant enterprise sought an charm. It claimed that the Courtroom of First Instance must annul the contested conclusion. It alleged a one plea of infringement of Short article 8(5) of Regulation 40/94 in assist of its action for annulment of the Contested Decision.

The Court deemed the proof, and took account of the similarity of the marks at concern, as well as the relevance of the name and the hugely unique character of the trade mark NASDAQ. It was held that the intervener experienced proven the existence of a upcoming risk, which was not hypothetical, of unfair edge currently being drawn by the applicant by the use of the mark applied for, from the track record of the trade mark NASDAQ.

As a outcome, there was for that reason no need to have to set aside the Contested Determination on that level. The applicant experienced not been capable to place forward 1 convincing cause to warrant the summary that its use of the trade mark NASDAQ would be started on thanks induce in just the that means of Post 8(5) of Regulation 40/94. In these instances the Board of Attractiveness had been appropriate to conclude that there had been no due bring about for the applicant’s use of the indication NASDAQ. The one plea alleging infringement of Report 8(5) of Regulation 40/94 had to be rejected collectively with the software in its entirety.

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© RT COOPERS, 2007. This Briefing Be aware does not provide a complete or comprehensive assertion of the regulation relating to the difficulties discussed nor does it represent legal assistance. It is intended only to emphasize common difficulties. Specialist legal assistance ought to constantly be sought in relation to certain situation.