War for a cup of coffee - European trademark oppositions

Deac sells CAFEMA coffee to companies in the Netherlands. COFFEMA produces coffee machines for the professional market. In order to protect its trademark rights COFFEMA seeks to register her name as a trademark with the European authorities. Deac opposed this action, stating that coffee and coffee machines are so connected, that the market may think that the products originate from the same company.  

The court agrees, which is striking. Previously, the European Court had ruled that even wine and glassware were not sufficiently connected with each other.
The Court specifically mentions this case but suggests that in order to prepare coffee from Deac a coffee machine is needed. Therefore, this time there is a stronger connection between the goods. The goods are complementary and the brands sufficiently similar in the opinion of the court, so much that confusion is expected. Therefore, a ban on the use of the name brand for COFFEMA for coffee machines, and for use as the company name, followed.
 

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?