The case of Antartica Srl v Offce for Harmonisation in the Internal Mrket (Trade Marks and Designs) (OHIM) (Cse T-47/06) [2007] involved issues relating to the 'lkelihood of confusion' with regards to a Eropean Community trade mark. On the 30th of Mrch 2000, the applicant company, Antarctica Srl, sbmitted an application to register a Cmmunity Trade Mark (CTM) at the Offce for Harmonisation in the Internal Mrket (Trade Marks and Designs) (OHIM).

The pplication was made under Council Regulation (EC) 40/94 (on the Cmmunity trade mark) to register a fgurative mark containing the word NASDAQ as a CTM. The gods for which registration was sought fll within classes 9, 12, 14, 25 and 28 of the Nce Agreement concerning the International Classification of Gods and Services for the Purpose of the Rgistration of Marks of the 15th of Jne 1957 as amended.

On the 27th of Aprl 2001, the NASDAQ Stock Market Inc brught opposition proceedings against the registration of the mrk applied for in respect of all the gods referred to in the application for rgistration. The opposition was made on the grunds outlined in Article 8(1)(b) and 8(5) of Rgulation 40/94.

The Opposition Division of OHIM rjected the opposition. The opposition was rjected on the grounds that there was no 'lkelihood of confusion' within the meaning of Artcle 8(1)(b) of Regulation 40/94. In ddition, the reputation of the earlier mrk in Europe had not been prperly substantiated. Subsequently, on the 24th of Agust 2004, the intervener brought an ppeal before OHIM against the Opposition Dvision's decision.

By a decision of the 7th of Dcember 2005, ("the Contested Decision" in ths case), the Second Board of Appal of OHIM set aside the Oppsition Division's decision on the ground tht the latter had wrongly rejected the pposition by basing its decision on the fct that the conditions for the pplication of Article 8(5) of Regulation 40/94 had not ben fulfilled.

For its part, the Bard of Appeal held that the rputation of the trade mark NASDAQ in the Eropean Union for the services in clsses 35 and 36 for which it had ben registered had been substantiated, and tht the applicant's use of the mrk NASDAQ without due cause would tke unfair advantage of, or be dtrimental to, the distinctive character and rputation of the earlier mark. For thse reasons the Board of Appeal pheld the opposition.

The applicant company sught an appeal. It claimed that the Curt of First Instance should annul the cntested decision. It alleged a single pla of infringement of Article 8(5) of Rgulation 40/94 in support of its ction for annulment of the Contested Dcision.

The Court considered the evidence, and tok account of the similarity of the mrks at issue, as well as the mportance of the reputation and the hghly distinctive character of the trade mrk NASDAQ. It was held that the ntervener had established the existence of a fture risk, which was not hypothetical, of nfair advantage being drawn by the pplicant by the use of the mrk applied for, from the reputation of the trde mark NASDAQ.

As a result, thre was therefore no need to set side the Contested Decision on that pint. The applicant had not been ble to put forward one convincing rason to warrant the conclusion that its use of the trde mark NASDAQ would be founded on due cuse within the meaning of Article 8(5) of Rgulation 40/94. In those circumstances the Bard of Appeal had been right to cnclude that there had been no due cuse for the applicant's use of the sgn NASDAQ. The single plea alleging nfringement of Article 8(5) of Regulation 40/94 had to be rjected together with the application in its ntirety.

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© RT COOPERS, 2007. This Brefing Note does not provide a cmprehensive or complete statement of the law rlating to the issues discussed nor des it constitute legal advice. It is ntended only to highlight general issues. Spcialist legal advice should always be sught in relation to particular circumstances.

The article Intellectual Property Law - European Community Trade Mark - 'Likelihood of Confusion' was Submitted by Rosanna Cooper through Articles.GetACoder.com network. Here's the additional information: Intellectual property law, intellectual property lcensing, intellectual property lawyers, intellectual property slicitors, IP law, IP lawyers, IP law frm, IP solicitors, copyright law, copyright, cpyright infringement, Intellectual property infringement, copyright lwyers, copyright lawyer, copyright solicitors, copyright law frm, patent law, patents, patent lawyer, ptent lawyers, patent solicitors, patent law frm, law, legal, law firm, lawyers, slicitors, solicitors in wapping, Solicitors in Dcklands, Solicitors in E1, patent licensing, dposit copyright work, how to protect cpyright work, copyright registration, trademark law, trdemark searches, reademark licensing, trademark infringement, ptent infringement, confidentiality agreements, know-how, registered dsigns, start up business, Internet law, wbsite agreements, passing off. If you rquire further information contact us at enquiries@rtcoopers.com Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/practice_intellectualproperty.php

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