NASDAQ fends off sports equipment mark

It's not often that the Court of First Instance gets the chance to rule on whether a Community trade mark 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 if an earlier registered mark. One such case, decided today, is Case T‑47/06, Antartica Srl v Office for Harmonisation in the Internal Market, The Nasdaq Stock Market Inc. Antartica applied to register a figurative sign (above right) as a Community trade mark for

class 9: ‘Protective helmets for sports, cycling, motorcycling, motor racing, skiing, protective goggles for sports and pads for protecting body and limbs against accidents for personal use, time recording apparatus’;

– class 12: ‘Vehicles, in particular bicycles and mountain bikes’;

– class: 14: ‘Clocks, chronometers, sports chronometers’;

– class 25: ‘Clothes, in particular sportswear, clothing for gymnastics, ski boots, and après-ski boots, sports shoes in general’;

– class 28: ‘Skis, ski poles, anti-vibration plates for skis, snowboards, boards for surfing on snow and on water, ski bindings and ski wax, stationary exercise bicycles, gymnasium equipment and apparatus’.

The Nasdaq Stock Market Inc. opposed, alleging a likelihood of confusion under Council Regulation 40/94, Art.8(1)(b) and detriment or unfair advantage, without due cause, under Art.8(5), in respect of its own Community trade mark for the word NASDAQ for

– class 9: ‘Computer programs amongst others in the field of the analysis of securities prices, stock exchange, finance; computer apparatus, in particular closed circuit apparatus for the generation and the dissemination of securities information as well as closed circuit CRT terminals for use therewith as well as computer programs for the access to securities information’;

– class 16: ‘Documentation and manuals related to computer programs and computer apparatus’;

– class 35: ‘Stock exchange price quotation services; listings of securities for quotations for sale or information purposes’;

– class 36: ‘Financial services, amongst others, providing and updating an index of security values, securities, fixed incomes (such as bonds) and derivative products (such as options, warrants and swaps); as well as classification, analysis and reporting thereof’;

– class 38: ‘Telecommunication services, amongst others electronic transmission of messages and data related to securities’;

– class 42: ‘Computerised securities information and retrieval services, being general computer services’.

The Opposition Division threw the opposition out: given the differences between the parties' goods and services there was no likelihood of confusion and the failure of NASDAQ to substantiate its reputation in Europe. The Board of Appeal however upheld the opposition, finding that the reputation of the trade mark NASDAQ in the EU for services in classes 35 and 36 had been substantiated and that 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 Court of First Instance to have the Board's decision annulled.

The CFI upheld the Board's decision and dismissed Antartica's application. Among the interesting bits are the following:

* References made byto the 'NASDAQ indexes' counted as use of the Community trade mark NASDAQ for the purpose of establishing the mark's reputation:

" ... as regards whether the references to the Nasdaq indices refer to goods or services supplied by the intervener and thereby constitute a use of the mark NASDAQ, it must be observed that that mark was registered, inter alia, for stock exchange price quotation services and listings of securities for quotations for sale or information purposes in Class 35, and for financial services including, amongst others, providing and updating an index of security values, in Class 36. It must be found that the Nasdaq indices do, in fact, refer to the stock exchange price quotation and financial services provided by the intervener, covered by its mark NASDAQ, and in respect of which it was registered. In those circumstances, since the use of the Nasdaq indices in the Community is not disputed, the Board of Appeal rightly held that the use of the mark NASDAQ had been established as regards the services in classes 35 and 36".

* There was a risk of unfair advantage. As the CFI said:

"Taking account of the fact that the financial and stock market listing services supplied by the intervener under its trade mark NASDAQ and, therefore, the trade mark NASDAQ itself, undeniably present a certain image of modernity, that link enables the transfer of that image to sports equipment and, in particular, to the high-tech composite materials which would be marketed by the applicant under the mark applied for, which the applicant appears to recognise implicitly by stating that the word ‘nasdaq’ is descriptive of its main activities.

Therefore, in light of that evidence, and taking account of the similarity of the marks at issue, the importance of the reputation and the highly distinctive character of the trade mark NASDAQ, it must be held that the intervener has established prima facie the existence of a future risk, which is 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 ...".

* 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 doesn't, 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 Qualità’. However, as OHIM rightly states, prepositions are not generally included in acronyms".

The IPKat feels that anyone who picks on an extremely well-funded foe with a highly distinctive name for a trade mark is asking for trouble; in such a circumstance winning the first round is a misfortune because it both prolongs the inevitable and makes it more expensive. Merpel says, I'm sure I've come across a few acronyms that include prepositions, and even the definite article, in my time. Should we compile a little list, starting with VOIP, and send it to the CFI?

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