Porsche races to victory in nine-year trademark battle

Europe’s highest court has handed victory to Porsche, bringing the curtain down on a nine-year trademark dispute. 

The Court of Justice of the European Union (CJEU) ruled against Kurt Hesse, who had been engaged in battle with the luxury car maker in a case centring on a Community trademark for the term ‘Carrera’. 

A Carrera is a popular brand belonging to the German manufacturer. 

In February 2007, Hesse filed a CTM application for the word mark ‘Carrera’. The application covered classes including television apparatus, data processing equipment and computer equipment. 

In July that year Porsche filed a notice of opposition citing its existing CTM for the term, approved in 2001. 

In February 2010, the Opposition Division at the Office for Harmonization in the Internal Market (OHIM) rejected the opposition and ruled that there was no likelihood of confusion between the marks. 

Porsche appealed against the decision the following month at OHIM’s Fourth Board of Appeal, which accepted the claim and annulled the Opposition Division’s decision. 

In March 2011, Hesse took the case to the EU General Court, which dismissed his appeal in 2014. 

In an appeal to the CJEU, Hesse said the court should set aside the lower court and appeal board’s ruling, reject Porsche’s opposition, and order it to pay costs. 

Hesse claimed that the General Court incorrectly assessed the similarity between the goods at issue and that all the relevant factors relating to the goods, including origin, marketing, distribution channels, and the respective points of sale, should be taken into account. 

But the CJEU, in a judgment handed down on January 21, said that in order to assess the similarity of goods or services, other relevant factors should be taken into account. 

Those factors include the nature of the goods, intended purpose, method of use, and whether they are in competition with each other or are complementary. 

Hesse also argued that the General Court distorted facts and evidence by failing to take into account results of a survey undertaken by German market research company GfK. 

According to the survey, respondents did not immediately associate the mark ‘Carrera’ with cars, but instead with toys, specifically electric race tracks. 

“Taking those results as a basis, the General Court ought to have found that the mark did not have a reputation,” Hesse claimed.
But Hesse’s claims were also rejected by the CJEU and he was ordered to pay costs. 

“Under article 138(1) of the rules of procedure of the CJEU, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 

“Since Porsche and OHIM have applied for costs to be awarded against Hesse and Hesse has been unsuccessful, he must be ordered to bear his own costs and to pay those incurred by Porsche and OHIM,” the court said.