On March 12, 2009, the European Court of Justice decided a case concerning the scope of protection of well-known trademarks according to Article 8(5) of the Community Trademark Regulation (C-320/07 P). The NASDAQ Stock Market Inc., the owner of the earlier trademark “NASDAQ,” registered inter alia for financial services, opposed the application of a figurative trademark “Nasdaq” for sport equipment by Antartica Srl. pursuant to Article 8(5) of the Community Trademark Regulation (broader protection for well-known trademarks). The Court of First Instance as court of lower instance held that Antartica’s use of the figurative mark “nasdaq” without due cause would take unfair advantage of or be detrimental to the distinctive character and repute of the earlier mark. The trademark NASDAQ presents a certain image of modernity, which establishes the existence of a future risk that this reputation could be transferred to the goods of Antartica.

Antartica Srl. claimed that the consumers of the goods covered by the trademark applied for are not aware of the earlier mark and, therefore, that any unfair advantage can be ruled out in the current case. For purposes of Article 8(5) of the Community Trademark Regulation the “reputation” of the earlier mark, according to Antartica, had to extend to the general public and not only to the public constituted by the consumers of the goods designated by that trademark.

The European Court of Justice agreed with the court of lower instance and stated that considering the omnipresence of the stock market NASDAQ 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 development of the financial markets, the reputation of the earlier mark reaches further than only to professional circles of the financial sphere.

However, only a few weeks later, on April 30, 2009, the European Court of Justice decided in another case regarding Article 8(5) of the Community Trademark Regulation (C-136/08 P) that no likelihood of confusion exists between the earlier figurative trademark “Camel,” which was registered for tobacco goods and cigarettes, and the figurative trademark “Camelo,” registered for coffee.

Though the court recognized the fact that the earlier trademark is well-known and that the trademarks are similar, it could not determine that the further requirements of Article 8(5) of the Community Trademark Regulation were fulfilled. The court could not find that the trademark applied for would take unfair advantage of the distinctiveness or would damage the reputation of the earlier trademark.

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