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.
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