NASDAQ for sports equipment detrimental to Nasdaq's prior mark

In Antartica Srl v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) had an opportunity to rule on whether a Community trademark application is barred from registration on the basis that it would be detrimental to, or take unfair advantage of, without due cause, the repute or distinctive character of an earlier registered mark.

Antartica srl applied to register a figurative sign featuring the word 'nasdaq' as a Community trademark for various products (including sports equipment) in Classes 9, 12, 14, 25 and 28 of the Nice Classification. The Nasdaq Stock Market Inc (Nasdaq) opposed the application, alleging a likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation, and detriment or unfair advantage, without due cause, under Article 8(5), in respect of its own NASDAQ Community trademark for goods and services in Classes 9, 16, 35, 36, 38 and 42.

The OHIM Opposition Division threw the opposition out given (i) the differences between the parties' goods and services, from which it concluded that there was no likelihood of confusion, and (ii) Nasdaq's failure to substantiate its reputation in Europe. The Board of Appeal, however, upheld the opposition, finding that:

• the reputation of the trademark NASDAQ in the European Union for services in Classes 35 and 36 had been substantiated; and
  
  
• Antartica's use of its mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character and reputation of the earlier mark.

Antartica then applied to the CFI to have the board's decision annulled.

The CFI upheld the board's decision and dismissed Antartica's application. Among other things, the court held that:

• references made by Nasdaq to the 'NASDAQ indexes' counted as use of the Community trademark NASDAQ for the purpose of establishing the mark's reputation;
  
  
• there was a risk that Antartica's mark would take unfair advantage of Nasdaq's mark because the senior NASDAQ mark presents "a certain image of modernity" that would be transferred to sports equipment and, in particular, to the high-tech composite materials which would be marketed by Antartica under the mark applied for, which Antartica appeared to recognize implicitly by stating that the word 'nasdaq' is descriptive of its main activities; and
  
  
• having confirmed that it is for the applicant to prove that it has due cause to use its mark, not for the opponent to prove that it does not, the CFI said:

  "the only argument put forward to that effect before the Board of Appeal is that the word 'nasdaq' was chosen because it is an acronym for 'Nuovi Articoli Sportivi Di Alta Qualita'. However, as OHIM rightly states, prepositions are not generally included in acronyms."

Jeremy Phillips, IP Consultant to Slaughter and May, London