NASDAQ’s reputation extends to the general public, says ECJ

European Union
In Antartica Srl v Office for Harmonization in the Internal Market (OHIM) (Case C-320/07 P, March 12 2009), the European Court of Justice (ECJ) has upheld a decision of the Court of First Instance (CFI) in which the latter had found that use of the figurative trademark NASDAQ took unfair advantage of the reputation of the earlier trademark NASDAQ.
 
The Nasdaq Stock Market owns the registered Community trademark (CTM) NASDAQ for goods and services in Classes 9, 16, 35, 36, 38 and 42 of the Nice Classification, including "stock exchange price quotation services", "listings of securities for quotations for sale or information purposes" and "financial services".
 
Antartica Srl, an Italian company, applied for the registration as a CTM of a figurative mark containing the word 'nasdaq' for goods in Classes 9, 12, 14, 25 and 28 (sports equipment).
 
Nasdaq opposed the application based mainly on Article 8(5) of the Community Trademark Regulation (40/94). Article 8(5) provides that a trademark may not be registered if it is identical or similar to an earlier trademark covering dissimilar goods or services where use of the trademark applied for without due cause would take unfair advantage of the reputation of the earlier mark.
 
The Opposition Division of OHIM rejected the opposition on the grounds that NASDAQ’s reputation had not been adequately shown. Nasdaq appealed. The Board of Appeal annulled the decision of the Opposition Division, holding that the latter had erred in finding that the conditions for the application of Article 8(5) had not been fulfilled.
 
Antartica appealed to the CFI, claiming that the board had infringed Article 8(5). As the similarity of the trademarks and the dissimilarity of the goods and services were not disputed, the CFI considered only the definition of the relevant public.
 
First, the CFI stated as follows:
 
"the public concerned is constituted of professionals and consumers who consult financial information either in the course of their main activity or for their own information. [...] The Board of Appeal was right to hold that the reputation of the trademark NASDAQ was to be determined in relation to th[e] European public."
 
However, the CFI further held that:
 
"NASDAQ is inherently very distinctive. [...] Having regard to its omnipresence in the press, not only in the specialist press but also in the general press, and the interest of a large part of the general public in the developments in the financial markets, it must be recognized that its reputation reaches further than the professional public specializing in financial information."
 
The CFI stated that it was for Antartica to demonstrate that it could rely on due cause for its use of the NASDAQ mark. Antartica had argued that 'nasdaq' was an acronym for the phrase 'Nuovi Articoli Sportivi Di Alta Qualita'. However, the CFI found that there was no due cause for Antartica's use of its mark and dismissed the appeal.
 
Antartica appealed to the ECJ, claiming that:
  • proof of use of the earlier mark had not been satisfactorily adduced; and
  • Article 8(5) had been wrongly applied.
With regard to the first argument, the ECJ noted that most of the services covered by the earlier NASDAQ mark are offered free of charge. However, according to the ECJ, this did not mean that the trademark was not used for commercial activities. Therefore, the ECJ rejected this argument as unfounded.
 
With regard to the second argument, the ECJ clarified the meaning of Article 8(5) by stating that where, because of the similarity between an earlier and a later mark, consumers establish a link between them, the later mark is taking unfair advantage of the earlier mark, even where consumers are not confused by this link. The existence of such a link must be subject to an overall assessment. The ECJ agreed with the CFI’s view that NASDAQ’s reputation reached further than the professional public specializing in financial information and held that Article 8(5) had been duly applied.
 
The appeal was thus dismissed.  
 
Matti Nousiainen,Berggren Oy Ab, Helsinki

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