Porsche has won the nine-year trademark dispute concerning CTM “Carrera” (C 50/15 P)
The dispute between Porsche and Kurt Hess has taken place since 2007, when Kurt Hesse filed a CTM application for the word mark „Carrera”. Porsche (entitled to the CTM “Carrera” since 2001) filed a notice of opposition, which was rejected by OHIM’s Opposition Division. Following Porsche’s appeals, OHIM’s Fourth Board of Appeal annulled the Opposition Division’s decision. Subsequently, Hesse took the case to the EU General Court, which dismissed his appeal.
The case went to the CJUE, which finally has handed victory to Porsche. Mr Hesse claimed, in essence, that the General Court made an error of assessment as regards the similarity between the goods at issue. He submitted that all the relevant factors relating to the goods at issue should be taken into account including, the origin, marketing, distribution channels, and the respective points of sale of those goods, that is to say, all the factors that distinguish mobile navigation apparatus from motor vehicles.
CJUE held that although the complementary nature of the goods at issue represents only one factor amongst several, in the light of which the similarity of the goods can be assessed, the fact remains that it is an autonomous criterion capable of being the sole basis for the existence of such a similarity.
Mr Hesse argued also that Porsche’s CTM had not acquired a reputation within the meaning of Article 8(5) of Regulation No 40/94. In particular, according to Mr Hesse, the General Court manifestly distorted facts and evidence submitted to it by failing to take into account certain fundamental results of the survey undertaken by the company GfK, according to which the public associates the mark CARRERA, not with automobiles, but first with toys, specifically with electric race tracks designed for children. CJUE held that finding is part of the assessment of the facts by the General Court which cannot be the subject of an appeal.
