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


The case of Antartica Srl v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case T-47/06) [2007] involved issues relating to the ‘likelihood of confusion’ with regards to a European Community trade mark. On the 30th of March 2000, the applicant company, Antarctica Srl, submitted an application to register a Community Trade Mark (CTM) at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

The application was made under Council Regulation (EC) 40/94 (on the Community trade mark) to register a figurative mark containing the word NASDAQ as a CTM. 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 Purpose of the Registration of Marks of the 15th of June 1957 as amended.

On the 27th of April 2001, the NASDAQ Stock Market Inc brought opposition proceedings against the registration of the mark applied for in respect of all the goods referred to in the application for registration. The opposition was made on the grounds outlined in Article 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’ within the meaning of Article 8(1)(b) of Regulation 40/94. In addition, the reputation of the earlier mark in Europe had not been properly substantiated. Subsequently, on the 24th of August 2004, the intervener brought an appeal before OHIM against the Opposition Division’s decision.

By a decision of the 7th of December 2005, (“the Contested Decision” in this case), the Second Board of Appeal of OHIM set aside the Opposition Division’s decision on the ground that the latter had wrongly rejected 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 held that the reputation of the trade mark NASDAQ in the European Union for the services in classes 35 and 36 for which it had been registered had been substantiated, and that the applicant’s use of the mark NASDAQ 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 applicant company sought an appeal. It claimed that the Court of First Instance should annul the contested decision. It alleged a single plea of infringement of Article 8(5) of Regulation 40/94 in support of its action for annulment of the Contested Decision.

The Court considered the evidence, and took account of the similarity of the marks at issue, as well as the importance of the reputation and the highly distinctive character of the trade mark NASDAQ. It was held that the intervener had established the existence of a future risk, which was not hypothetical, of unfair advantage being drawn by the applicant by the use of the mark applied for, from the reputation of the trade mark NASDAQ.

As a result, there was therefore no need to set aside the Contested Decision on that point. The applicant had not been able to put forward one convincing reason to warrant the conclusion that its use of the trade mark NASDAQ would be founded on due cause within the meaning of Article 8(5) of Regulation 40/94. In those circumstances the Board of Appeal had been right to conclude that there had been no due cause for the applicant’s use of the sign NASDAQ. The single plea alleging infringement of Article 8(5) of Regulation 40/94 had to be rejected together with the application in its entirety.

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.

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