News Item

NASDAQ wins in the European Court of Justice

20 March 2009

The European Court of Justice (ECJ) handed down a decision in the case C-320/07 ANTARTICA vs NASDAQ STOCK EXCHANGE & OHIM and found in favour of the US financial institution.

The judgment is in an appeal from an earlier case held in the Court of First Instance. In that case an application by Antartica to register a logo incorporating the word NASDAQ in relation to a series of goods, including sportswear and sports equipment, was rejected on the grounds that such use would take unfair advantage of the reputation in the registered trade mark NASDAQ by Nasdaq Stock Market Inc(Nasdaq).

The Court of First Instance held that the trade mark NASDAQ has a distinctive reputation not only in the financial and other specialist press but also in the general press and a larger part of the general public.

The Court of First Instance stated that the Nasdaq Stock Market conveyed a certain image of modernity and that such a link enables the transfer of such an image to sports equipment, and in particular the high tech composite materials, which would be marketed by Antartica under the mark for which registration was sought.

The ECJ dismissed the claim that the NASDAQ mark had not acquired a reputation in the Community as the services were offered on a non-profit making basis. The Court stated that even if some of the services for which the NASDAQ mark is registered are offered free of charge, the commercial company should nevertheless be able to create and maintain an outlet for those services in the Community, as against the services of other undertakings.

Reputation does not hinge on revenue alone in order to protect and maintain distinctive brands and prevent the dilution by third parties for seemingly unconnected goods and services.

The ECJ held that as the reputation of the NASDAQ mark had filtered into the general arena, Nasdaq were able to establish that there was a risk that use of the mark by Antartica would take unfair advantage of the distinctive NASDAQ brand.

For more information contact your usual Marks & Clerk attorney or Matt Sammon at msammon@marks-clerk.com