In a legal showdown to rival the Nestle and Cadbury trade mark war, Porsche’s 9 year battle against Kurt Hesse, a German toy manufacturer, in relation to the ‘Carrera’ community trade mark (‘CTM’) has come to an end.
Back in February 2007, Kurt Hesse filed a CTM application for the work mark ‘Carrera’ in classes relating to television apparatus, computers and apparatus for recording and transmitting sound or images and data processing equipment. Porsche opposed this application in July 2007. Although initially the Opposition Division rejected Porsche’s complaint, the General Court upheld Porsche’s opposition (and the decision of OHIM’s Board of Appeal) back in March 2011.
On 21 January this year, the Court of Justice of the European Union (‘CJEU’) rejected Hesse’s further appeal that Porsche’s opposition of the CTM application for ‘Carrera’ should be rejected and Porsche ordered to pay his costs. Hesse considered that the General Court incorrectly assessed the similarity between the goods and did not fully take into account all other relevant factors – including origin, marketing, distribution channels and points of sale.
The CJEU considered that Hesse was asking it to make factual assessments rather than address an error in law. The CJEU concluded that the General Court had taken into account the relevant factors (including the nature of goods, the intended purpose and whether the goods were in competition). The CJEU therefore dismissed the appeal on the basis that Hesse’s grounds were inadmissible and unfounded. It subsequently upheld the General Court’s decision that Porsche’s existing CTM had a reputation which would be infringed by Hesse’s CTM application.
The CJEU ordered Hesse to pay both Porsche and OHIM’s costs.