Intellectual Property Law – European Community Trade Mark – ‘Likelihood of Confusion’


Antartica Srl v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-47/06) (2007) concerned the "likelihood of confusion" with regard to trade in the European Community brand. On 30 March 2000, the applicant company, Antarctica Srl, filed an application for the registration of a Community trade mark at the Office for Harmonization in the Internal Market (OHIM).

The application was made pursuant to Council Regulation (EC) No 40/94 (on the Community trade mark) in order to register a figurative mark containing the word NASDAQ as a Community trade mark. The goods for which registration was sought fell within Classes 9, 12, 14, 25 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957, as as modified.

On April 27, 2001, NASDAQ Stock Market Inc. filed an opposition proceeding against the registration of the mark applied for for all the goods in the application for registration. The opposition was based on the grounds set out in Article 8 (1) (b) and (8) (5) of Regulation No 40/94.

The opposition division of the OHIM rejected the opposition. The opposition was rejected on the ground that there was no likelihood of confusion within the meaning of Article 8 (1) (b) of Regulation No 40 /. 94. Moreover, the reputation of the earlier mark in Europe had not been properly substantiated. Subsequently, on 24 August 2004, the intervener lodged an appeal with the OHIM against the decision of the Opposition Division.

By decision of 7 December 2005 (hereinafter referred to as "the contested decision"), the Second Board of Appeal of OHIM annulled the decision of the Opposition Division on the ground that it had rejected the decision. Opposition by basing its decision on the fact that the conditions for the application of Article 8 (5) of Regulation No 40/94 were not fulfilled.

For its part, the Board of Appeal found that the reputation of the NASDAQ mark in the European Union for the services in Classes 35 and 36 for which it had been registered had been reasoned and that the use by the applicant for the mark NASDAQ for no reason would derive an unfair advantage or be prejudicial to the distinctive character and reputation of the earlier mark. For these reasons, the Board of Appeal upheld the opposition.

The applicant company has lodged an appeal. It concluded that the Court of First Instance should annul the contested decision. It alleged a single ground of infringement of Article 8 (5) of Regulation No 40/94 in support of its action for annulment of the contested decision.

The Tribunal considered the evidence and took into account the similarity of the conflicting marks, as well as the importance of the reputation and highly distinctive nature of the NASDAQ mark. It was concluded that the intervener had established the existence of a future, non-hypothetical risk of undue advantage derived by the applicant from the use of the mark applied for, the reputation of the NASDAQ mark.

Consequently, there was therefore no need to annul the contested decision on that point. The applicant has not been able to put forward a convincing ground to conclude that its use of the NASDAQ mark is justified for valid reasons within the meaning of Article 8 (5) of the Regulation. 40 / 94. In those circumstances, the Board of Appeal was correct in concluding that the applicant's use of the NASDAQ sign had not been justified. The single plea alleging infringement of Article 8 (5) of Regulation No 40/94 was to be rejected with the application in its entirety.

If you want more information, contact us at

Visit or

© RT COOPERS, 2007. This information statement does not provide a complete statement of the law regarding the matters examined, nor does it constitute legal advice. It is only intended to highlight general problems. Specialized legal advice should always be sought depending on particular circumstances.


  1. Today, while I was at work, my sister stole my apple ipad and tested to see if it can survive a thirty foot drop, just so she can be a youtube sensation. My iPad is now destroyed and she has 83 views. I know this is entirely off topic but I had to share it with someone!

  2. Wonderful items from you, man. I’ve have in mind your stuff previous to and you are simply too great. I actually like what you’ve got here, really like what you’re stating and the way in which through which you say it. You’re making it enjoyable and you still take care of to keep it smart. I cant wait to read much more from you. That is really a terrific site.

  3. Taking a trip, regardless of whether for business or enjoyment, is enjoyable and filled with expectations. A lot of things you might forget about which might be necessary to you during your trip. Something is feasible if you have journey knowledge. Make use of the tips shared on this page to experience a fantastic journey. When traveling in countries around the world with hazardous tap water, keep in mind other methods that you might be subjected. Near the mouth area when using the shower area and remember to brush your pearly whites just with taken care of drinking water. If one makes teas or caffeine with the normal water, give it time to boil for a number of minutes well before steeping. A good tiny exposure could make you very unwell. always wanted to see and maybe only thought about in desires. Maybe you may also earn some new international friends. In this article, you will learn some very nice recommendations and have To save cash when traveling for enjoyment, check into swapping homes. Swapping homes helps save a lot of funds that will or else be invested in a hotel. It is also a whole lot convenient and huge than your average hotel room. There are several places online which allow you to make property swapping arrangements. When traveling in far off regions by automobile there is not always a ease end at each and every distance marker. While you are going with children, in particular, this can be very bothersome. Take together a sheet so that you can drape it across the open entrance doors of your respective vehicle to give them some semblance of security if you should make that unexpected emergency pit stop along the side of the path. To help make the most of travel abroad, try to prepare no less than several actions that aren’t listed in vacationer information textbooks or blogs and forums. This can be achieved by getting hold of information and facts created for and manufactured by residents, whether it be from newspapers, weblogs or folks on twitter. Stepping outside the vacationer bubble is likely to make your trip much a lot more exciting and exciting. When traveling by using a dog, do not forget that most dog materials are much better purchased on your spot. As an example, unless your puppy is on the particular diet, getting a handbag of pet food once you appear is a lot easier than trying to transfer it. Dishes along with other products are identical way. When you find yourself traveling, purchase money storage containers that you can put on within your clothes or sew simple pockets in the inside your stomach music group. If you can not sew, check with someone who can to make it happen for yourself or take it to some modify or seamstress, and request they sew an within budget for you personally. This maintains your belongings, id and funds safe and you will not need to worry about someone stealing your journey travelling bag or finances. Since you’ve acquired a number of the fundamentals on touring, tell your supervisor you take a vacation, get the aeroplane admission, boat ticket or no matter what indicates you intend on consuming and go! Remember to always be secure whether vacationing by yourself or otherwise not. Demand instructions and aid if you require it. The majority of people will not bite. Especially, As previously mentioned, a lot of people end up inside the situation to travel sooner or later or other. Information about journey can assist you to enjoy the situation within a more enjoyable way. These pointers can be quite beneficial someday.

  4. Vacationing is a thing that most people wish to do. A lucky couple of get to travel to amazing locations around the globe. Consider preserving some funds and set a goal. It doesn’t make a difference if you plan on proceeding someplace domestic or international. A piggy bank is the best way to start. Spare modify adds up fast! If you have no dollars to spare don’t fret. A hike from the forests or a simple escape to view neighborhood internet sites, could be equally as rewarding! Setting up a street trip entertainment kit for the kids will help be sure your family members getaway is really a dream rather than a horror. There is no greater strategy to start to see the land compared to a street vacation. However, it is crucial that your youngsters remain occupied in order to battle the boredom of the lengthy auto journey. Pack traveling variations of well-known games, greeting cards, and older kids could love a log in order to record their experience. To make the most of vacation overseas, try to program a minimum of a number of actions that aren’t indexed in visitor guideline textbooks or blogs. This can be done by getting hold of info designed for and manufactured by natives, be it from classifieds, blog sites or men and women on flickr. Stepping away from visitor bubble can certainly make your journey much a lot more fascinating and exciting. To save power when traveling in hilly or mountainous areas, take into account taking a taxi cab towards the maximum point in this town or area you’re visiting, then move lower. This lets you begin to see the whole city, which includes any mountain vistas, while not having to include a lot of altitude and putting on yourself out. When you are traveling overseas, hold on for your reciepts for credit card acquisitions. Whenever you submit them, particular date them and be aware the goal of the purchase. Once you get home, you own an fantastic way to reconcile your assertion together with the cash you expended. This will make it much easier to spot any deceitful expenses. If you’re responsive to the smell of cleansers (or simply don’t like them!) consider taking some little candle lights along on the vacation. This can help face mask the scent from the products the maids use and the smells can also help relax you. Some fragrances can also sooth you and provide you with a greater night’s sleep. Now you understand what to look out for when organizing your trip, you can start taking into consideration the enjoyable you’ll have when investing in there. Step one to having a good time on any vacation is usually to strategy correct. Keep these tips under consideration to actually don’t neglect something!

  5. Many people take into account planing a trip to be an odd sensation. It could be for enjoyment or since it’s needed. Regardless of whether your following trip is a you take for organization of make sure you, it is likely you want some traveling suggestions to make it excellent. This part gives you some great advice and tips to further improve your travel experiences. A helpful tip for vacationers is to make sure to obtain sufficient medical health insurance in place to pay for healthcare bills in the event of damage or illness although in another country. It is often the case that residential medical insurance policies usually do not supply substantial insurance coverage for therapy and hospital stay in international nations. Therefore, it is very important obtain these kinds of insurance for the complete time period of your vacation. Should you be staying at a hostel or camping out while traveling, you might want to search out other locations to make use of the restroom. Restroom facilities at may hostels might be dirty to the point of nauseating, even though the washroom in the fast food joint down the street at the very least needs to conserve a lowest measure of cleanliness. If you are vacationing right away or in the early morning, obtain your doctor’s approval to adopt a slumbering supplement when you board. Consume your breakfast after which drift off to dreamland, and you’ll sleeping perfectly throughout the total flight. Delay until you will be airborne for taking your tablet however, when your air travel is late or must get back to the entrance. Prepare your packing. Within these days of baggage fees and bodyweight boundaries, most vacationers have 1 travel suitcase. To put all things in, you have to be an intelligent packer. Examine the climate predict for your personal vacation spot and choose costumes you could mix and match. Opt for levels, which can easily be added or taken out as the temperatures modifications. Also make sure to wear your bulkier/bulkier shoes or boots in order that they don’t hog too much space with your suitcases. Before you get to your vacation vacation spot, search the internet to identify a blogger who content about what’s happening within this city. Take the time to electronic mail the blogger and request for their referrals about best places to go. This can be a great way to obtain the inside of scoop in your holiday location. Everyone aboard an airplane, coach or dispatch, has anything in common, they may have all given money for the privilege to be there. Some travellers appear happier than the others, though. These are the basic smart vacationers, who have produced an effort to set up their travel ideas for maximum comfort and overall economy. A bit education and learning will help you to be a part of their rates and travel using a laugh.

  6. So, you’ve booked it. You’re able to implement your traveling program? Well, now is an excellent time. You almost certainly have lots of questions in what you ought to know, but don’t be concerned, this article can help you. Listed below are some pointers that can help you begin with your touring ambitions. When you are a lady vacationing immediately on enterprise, be sure that the blouses and underthings you put on and bring might be washed from the drain and hung up or blow-dried up. Neglected suitcases or connections can mean you get to a resort late at night, with simply the clothes lying on your back to put on the next day. Light-weight, wrinkle-free polyester or micro-fiber blouses and tops can be laundered and installed up, and will be dry each morning, as will all your lingerie. Review on the spot you will and take safety measures to shield oneself from offense. Some visitor areas have specifically higher robbery charges. It is very important to understand this stuff prior to going. You can find often straightforward safeguards you are able to choose to adopt to make oneself less of a focus on. If you plan to visit buying clothing when overseas, research that area’s way of measuring program. Outfit specifications differ greatly from nation to nation. Additionally they change greatly from brand to manufacturer. Nevertheless, an elementary familiarity with their clothes dimensions can help you enter the ballpark in terms of locating a dimension which fits you will go. You may help make your holiday less stress filled by loading lightly for the journey. Whenever you travel to go to friends or family, be considered a well-mannered guest and never think they will make all of your sightseeing and tours plans for you. Many individuals think they can be there being entertained, which can be naturally an wrong assumption and creates poor experiencing. As an alternative, research your options beforehand, let your hosts determine what you’re planning to do, ask but don’t oblige these to go along with you, and spend time together in great will, understanding you might be as being a gracious visitor. Ideally you possess found the following tips to become equally beneficial and stress relieving. Through taking them and apply these people to the planning of your holiday, you are likely to can get to the location with less pressure than you would in the event you did not have the precious information that you learned in this article.

  7. It is actually a popular simple fact that touring is generally a exciting and calming experience. Even so, there are tips you could adhere to that will make the quality of your holiday better yet. The subsequent article will explain what some of the recommendations are. A few of the subsequent information and facts could even surprise you. Acquire precautions when you are traveling on holidays. Bear in mind to contact and confirm your trip ahead of time. Holiday seasons are usually a busy time of year, specifically at the air-port. In case you are delivering presents, ensure you abandon them unwrapped. They will likely be unwrapped and examined by protection anyway. To obtain the most out of your vacation with a child, when selecting a resort, you should ensure that you have either an additional place or even a deck. Since preschoolers get repeated naps plus go to mattress earlier, this will likely make sure that you are capable to inhabit on your own although your little one rests. Nobody definitely wants to consider it a night at 8-10 later in the day while they are on vacation. If you are planning a visit overseas, it is important to be sure to obtain the required vaccinations upfront. While you are inside the planning phases of your own getaway, pay attention to any shots which can be essential or recommended. Faltering to accomplish this could make you wide open for harmful amazing illnesses that may wreck your trip, or even worse, damage your wellbeing. Preparing for trip is definitely a process of managing out of the line of the you absolutely need against what could be good to possess. You just have a lot place within your baggage. A great way to create your vacation far more easy would be to only load the uncovered basics. Purchase other things you may need once you are at the location! Generating travel preparations effectively before hand will help you cut costs. Although there are lots of issues you’ll want to buy while on a journey, these matters have anything in common. When you get them sooner, they’ll be less expensive. Should you don’t retail outlet with the eleventh hour, you can lengthen your journey considerably more. Touring is important for enterprise and enjoyment at the same time. It is often hard to get around airports, physique paths for car traveling, as well as understand a bus routine. Exactly how do you make traveling less difficult, and more pleasurable also? On this page we certainly have supplied some tips that can help. We hope they will show effective when you choose to vacation.

  8. If you’ve got a getaway springing up, then you’ve arrive on the right place. Preparing for a getaway is usually one of by far the most stress filled stuff you do. But here we get some guidance for stressed trip goers that can help things operate significantly better instead of make you seeking a holiday through your trip. In the event you stay in an aisle chair, you’ll have more possibilities. Besides the see, home window seating don’t have numerous advantages. An aisle seating offers you far better accessibility luggage storage, bath rooms, air travel staff members, and also stop you from being squeezed on both edges. If you are traveling overseas, you really should talk to any adverse health practitioner in regards to what vaccinations are suggested. Diverse locations around the world have different diseases so you always want to be prepared for what you will be walking into. There are numerous shots around that may make you stay secure. For the stress-free of charge holiday, ensure men and women can make contact with you. Take your mobile phone with you whilst keeping it charged. Bring your laptop along once you know you will get an internet connection your location keeping. In the case of urgent, folks can inform you what is happening and you won’t possess any terrible unexpected situations whenever you come back. You can make your holiday less nerve-racking by packaging gently for the journey. After you have found an agent and an insurance coverage you will be satisfied with you may spend your high quality and you should obtain your published coverage. Receiving your premium notifys you that the insurance professional has forwarded your insurance coverage premium information and facts to the insurer. In the event you don’t acquire your policy within a pair months, speak to your representative. You should feel great reading the following tips with regards to touring. There is a lot of real information to not forget and implement, but no less than you ought to have an understanding what you need to do and carry traveling wiser and less dangerous. You could revisit this list to get a refresher.

  9. It can be wonderful to destroy from the mundane hum of every day time existence. Traveling is a great opportunity to meet new people and expand your perspective on the planet. Wisely preferred vacation ideas can lend to an practical experience which will assist you for a lifetime. On the flip side, creating a bad decisions or perhaps not preparing appropriately can destroy your enjoyable. Here are a few tips to help you make the most from your next round with travelling. Request loved ones for ideas on spots you must go to when attemping to organize your following getaway. Sometimes they are going to not just have the ability to offer you good recommendations for areas you should go, they can also guide you away from places that they didn’t have such a good time. Should you be worried about robbery inside the countries you’ll be checking out, setup your clothing collection ahead of time to ward them off of. You can sew passport-measured pockets into the top of your pants this approach is much more cozy when jogging compared to a moneybelt. Also think about coating the bottom of a material travelling bag with fowl wire to discourage theives with razor blades. Should you be touring in foreign countries, it’s an intelligent strategy to sign up using the Intelligent Visitor Registration Program (Stage), a totally free government service for residents of the United States who reside in a foreign country or are intending to visit one particular. Supplying Phase along with your contact info and some details on your trip allows them to speak to you in case of a crisis as well as counsel you of traveling cautions and alerts. When visiting over a highway getaway, be sure you bring a handbag along with you for trash can. Even people that don’t usually take in in the car will in the course of long streets journeys, particularly if don’t desire to stop and try to eat and increase time for you to your holiday. A trash can handbag can help you keep the wreck and mess to a minimum. Mentioned previously initially of your write-up, you would like to understand as much as you are able to about vacationing. Remember that the data you merely acquired, isn’t every thing you should know on how to journey proficiently, so continually be keeping an eye out for first time what you should understand. Implement the following tips along with your journeys in the future must be easier.

  10. About to traveling usually takes lots of operate. Numerous things could go improper, and go appropriate if you are going for a trip. Often it can even be a little frustrating to try and continue to keep every thing direct. Fortuantely, you possess this short article which will provide you with some advice with regards to the best way to traveling without receiving grey hairs. Think about scheduling a luxury cruise for your next traveling journey. If you are on the vacation cruise, you do not need to be concerned about discovering places to nibble on or continue to be. Expeditions on land could be set up to suit your needs by the vacation cruise director. Everything is done for you. So, you can easily sit back and enjoy. Take at least beneficial things along if you journey. With a lot of diverse pursuits in unfamiliar environment, dropping points is extremely common on holiday. Far worse, you might be the target of the thievery. When selecting suitcases, pay attention to the easy carrying it more than long distance. A durable metallic moving travel suitcase is often perfect. Some moving luggage also have bands that allow them to be donned being a back pack through places that you can’t roll them. Your travel luggage will be strolling for a longer time ranges than you imagine. To save power when traveling in hilly or mountainous areas, look at having a taxi towards the highest point in the town or location you’re going to, then walk lower. This lets you start to see the whole village, which include any mountain peak vistas, while not having to deal with excessive altitude and sporting yourself out. It may be a great idea to pack a tiny bag of goldfish or provide a little toy coming from a fastfood cafe with a airline flight along with you. Even though you don’t have kids, there can be some needy mom or dad which will be so thankful to you for your personal present. When you have go through at the beginning of this article, planning a getaway can be extremely worrisome. Keeping in mind some very nice tips and concepts will prove to be beneficial to you within your time period of will need. There is absolutely no right or wrong approach to take about arranging a getaway, however you may still always keep some tips in your mind for the very next time.

  11. I챠m amazed, I must say. Seldom do I encounter a blog that챠s both equally educative and engaging, and let me tell you, you have hit the nail on the head. The issue is an issue that not enough people are speaking intelligently about. I am very happy I came across this during my search for something relating to this.