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ECJ Antartica case - trade mark use and dilution

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat draws his readers' attention to the short and sweet judgment of the ECJ in Antartica Srl v OHIM (Nasdaq intervening) from last Thursday.

Antartica applied to register Nasdaq as a CTM for various types of sporting goods and clothing. This was successfully opposed before the OHIM Second Board of Appeal and CFI by Nasdaq under Art.8(5) of Regulation 40/94, based on its Nasdaq registration for financial and stock market quotation services.

Antartica appealed but the ECJ rejected its main arguments:

• Proof of use - Antartica argued that Nasdaq hadn't used its mark as its stock market indicies were available free of charge in the press and on TV. This was rejected by the ECJ, which noted 'even if part of the services for which the earlier mark is registered are offered by The Nasdaq Stock Market free of charge, that does not of itself mean that that commercial company will not seek, by such use of its trade mark, to create or maintain an outlet for those services in the Community, as against the services of other undertakings.'
• Unfair advantage - The ECJ repeated what it said in Intel about criteria for establishing a 'link'. The court noted that the CFI had correctly considered potential consumers of Antartica's (the applicant's) goods as the relevant public for establishing whether an unfair advantage had been taken.
  
• Extent of reputation required under Art.8(5) - Antartica had argued that the degree of reputation required under Art.8(5) is knowledge of the mark among the general public (as opposed to among the consumers of either party's goods/services). The ECJ did not reject this out of hand. Instead it noted that in this case it wasn't necessary to consider the point in detail because 'the reputation of the earlier mark reaches further than the professional public specialising in financial information'.
  

The IPKat reckons that, for the most part, this case doesn't say too much which is new, but it does restate some important principles. In particular, the use point must be right, otherwise all the companies which offer services which are free at the point of use, but which are funded by advertising (e.g. many email services) wouldn't be using their trade marks. However, the court's treatment of whether reputation needs to be amongst the general public (as is now the case in the US) is unfortunate. It would have been very easy for the ECJ to have dismissing this summarily - it's clear from past case law (e.g. General Motors v Yplon) that pan-market fame isn't required. By confining its comments to the facts here, the court has introduced unnecessary uncertainty (unless, of course, the court is thinking of introducing a pan-market fame standard by the back door).

Full post as published by IPKat on March 17, 2009 (boomark / email).