CARRERA, cars and navigation equipment

A trademark right does not only give protection against use by other of the trademark for similar products, but also for complementary products. The question is, however, how far does this reach? Porsche has registered the trademark CARRERA in 1976 for sports cars. After manufacturing the Porsche Carrera GT (2006), a European trademark is applied for CARRERA for navigation equipment. Porsche opposes this application.

In first instance Porsche loses the opposition. However, this past fall the European Court decided in Porsche’s favor. Even though the products are completely different the consumer may still get confused. It may assume that the navigation equipment is made by Porsche or is related to the company. Furthermore, there is coat tail riding on the reputation of Porsche Carrera (as a technological superior company). The trademark is refused.

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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?