Een drietal druppelvormen (HvJ EG)
HvJ EG, 12 Maart 2009, zaak C-320/07 P, Antartica Srl tegen OHIM / The Nasdaq Stock Market, Inc (Nederlandse versie nog niet beschikbaar).
Merkenrecht. NASDAQ tegen NASDAQ. Interessante oppositiezaak. Aanvraag gemeenschapswoord/beeldmerk voor de aanduiding NASDAQ met een drietal druppelvormen erboven, voor - onder meer - sportartikelen. Oppositie op grond van ouder gemeenschapswoordmerk NASDAQ. Het GvEA oordeelde eerder (IEF 3952) dat het OHIM de inschrijving terecht had geweigerd op basis van art. 8(5) GMV (het equivalent van "sub c" - niet soortgelijke waren, bekend merk, en ongerechtvaardigd voordeel uit en afbreuk aan onderscheidend vermogen en reputatie). “Clear exploitation and free riding on the coat tails of a famous mark or an attempt to trade upon its reputation”. Het Hof bekrachtigt het arrest van het Gerecht.
Zaak met een Nederlandse tintje, aangezien interveniënte The Nasdaq Stock Market Inc. bij het Gerecht werd vertegenwoordigd door Joris van Manen and Jesse Hofhuis (De Brauw Blackstone Westbroek) en bij het OHIM door Novagraaf Nederland.
The first part of the single plea, based on the lack of use of the earlier mark
28. In support of the first part of the single plea, Antartica calls into question the use of the earlier mark for the goods and services in Classes 35 and 36 within the meaning of the Nice Agreement by submitting that The Nasdaq Stock Market offers them in the Community on a non-profit-making basis, whereas the use of a trade mark is based on the premiss that the goods or services for which it is registered are paid for.
29. It is sufficient to note in that respect that, 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.
31. Consequently, the first part of the single plea must be rejected as unfounded.
The second part of the single plea, based on the taking unfair advantage of the distinctive character or the reputate of the earlier mark
32. By this part of the plea, Antartica claims that the consumers of the goods covered by trade mark applied for are not aware of the earlier mark and, therefore, that contrary to the view of the Court of First Instance, any unfair advantage can be ruled out in the present case.
44. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (IntelCorporation, paragraph 31).
45. However, the existence of such a link must be subject to an overall assessment, taking into account all factors relevant to the circumstances of the case and, in particular, the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use and the existence of the likelihood of confusion on the part of the public (Intel Corporation, paragraphs 41 and 42 and the case-law cited).
46. As regards, more particularly, the relevant public to be taken into consideration, it should be pointed out that that public will vary according to the type of injury alleged by the proprietor of the earlier mark.
(…)
49. In that respect, the Court of First Instance held, in paragraph 58 of the judgment under appeal, that, having regard to its omnipresence in the press, not only in the specialist press but also the general press, and the interest of a large part of the general public in the developments in the financial markets, the reputation of the earlier mark reaches further than the professional public specialising in financial information.
50. It is implicitly, but clearly, apparent from that assessment that, when assessing the existence of injury, the Court of First Instance included in its examination, as the relevant public, the average customer of goods and services for which the later mark, that is to say Antartica’s mark, was requested.
55. It follows that the second part of the single plea must be rejected, as being partly unfounded and partly inadmissible.
Lees het arrest hier.
