Antartica Srl v. Internal Market Coordination Bureau [Trademarks and Designs] [OHIM] [Case T-47/06] [2007] cases related to issues related to the possibility of confusion ' on the European Community Trademark. On March 30, 2000, the applicant company Antarctica Srl filed an application for the Internal Market Coordination Bureau [Trademarks and Designs] [OHIM] Registered Community Trademark [CTM].
The application was made in accordance with Council Regulation [EC] 40/94 [on the Community Trademark] to register a graphic mark containing Nasdaq as the term CTM. The goods under review were registered in categories 9, 12, 14, 25 and 28 of the Nice Agreement for the International Classification of Goods in Goods and Services Registered, as amended on June 15, 1957.
On April 27, 2001, Nasdaq Stock Market Inc. filed an objection to the registration of the applied trademark based on all the goods mentioned in the application for registration. The objections were made on the grounds outlined in sections 8[1][b] and 8[5] of Regulation 40/94.
The OHIM opposition rejected the opposition. The opposition was dismissed on the grounds that there was no possibility of confusion. Within the meaning of Article 8[1][b] of Regulation 40/94. In addition, the reputation of early European trademarks has not been properly verified. Subsequently, on August 24, 2004, the interveners filed an appeal against OHIM against the opposition's decision.
According to the decision of December 7, 2005 [the "controversial decision" in this case], OHIM's Second Appeals Board suspended the opposition's decision on the grounds that the latter mistakenly rejected the opposition. A decision is taken in accordance with the decision on the application of Article 8[5] of Regulation 40/94 that has not been fulfilled.
For its part, the Appeal Board believes that the Nasdaq trademark's reputation for its registered Class 35 and 36 services in the European Union has been confirmed and that the scope of application of the NASDAQ trademark has not been properly used because of the early trademark The uniqueness and reputation of the company may be unfairly beneficial or harmful. For these reasons, the Appeals Board supports the opposition.
The applicant company bought an appeal. It stated that the Court of First Instance should abolish the disputed decision. It claims unilateral violation of section 8[5] of Regulation 40/94 to support its action to repeal the disputed decision.
The court heard the evidence and considered the similarities of the disputed trademarks, as well as the importance of reputation and the highly distinctive features of the Nasdaq trademark. Some argue that the intervention has identified the existence of future risks, which is not hypothetical because of the unfair advantage of applying the trademark Nasdaq's reputation.
Therefore, there is no need to put a controversial decision on this point. The applicant failed to present a compelling reason to ensure that its use of the trademark Nasdaq was based on the justifications referred to in Article 8[5] of Regulation 40/94. In this case, the Appeal Board has the right to conclude that the applicant's use of the Nasdaq logo is not justified. A single request purporting to violate section 8[5] of Regulation 40/94 must be rejected along with the application in its entity.
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©RT COOPERS, 2007. This briefing does not provide a comprehensive or complete statement of the law on the issue in question, nor does it provide legal advice. It is only used to highlight general issues. Expert legal advice should always be provided for specific situations.
Orignal From: Intellectual Property Law - European Community Trademark - 'Possibility of Confusion'
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