United States: CARRERA's Trademark Reputation: "Luxury, High Tech, High Performance And Success"

Last Updated: April 4 2016
Article by Catherine Muyl and Alice Berendes

The German carmaker, Porsche AG, which designed the iconic 911 Carrera sports car, owns the European Union and German "CARRERA" word mark, registered for "automobiles" in class 12. How far beyond automobiles does the protection afforded by that registration extend?  Pretty far, according to recent outcome of a long running European trademark dispute, which affirmed that Porsche's trademark protection extends to "complementary" products, and also to dissimilar products if the applicant is seeking to take unfair advantage of Porsche's reputation.

The Opposition Division Proceedings

In February 2007, Mr. Kurt Hesse sought to register CARRERA as a European Union trade mark for a wide range of goods in class 9 including "apparatus for recording, transmission or reproduction of sound or images", "DVD players", "television receivers", "USB sticks", "home cinema" and "mobile navigation apparatus, in particular satellite-based mobile navigation apparatus."  Five months later, Porsche filed an opposition to Mr. Hesse's application with the European Union Intellectual Property Office (EUIPO) on the basis of its two prior CARRERA marks. Porsche claimed that there was a risk of confusion because the products were similar and also that the applicant was seeking to take unfair advantage of the reputation of the earlier marks.

On 25 February 2010, the Opposition Division rejected Porsche's opposition in its entirety. The Opposition Division held that the goods covered in Mr. Hesse's application were different from those covered by Porsche's earlier marks because their method of production, manufacturer, distribution, nature and purpose were different, because they were not in competition with automobiles, and because the differences between the products were so significant that the Mr. Hesse's products would not be taking advantage of the reputation of the earlier marks.

The Fourth Board of Appeal

Porsche appealed and, on January 11, 2011, the EUIPO Fourth Board of Appeal annulled the Opposition Division's decision and allowed the opposition in respect of all the goods. The Board of Appeal found that, as regards Mr. Hesse's "mobile navigation apparatus, in particular satellite-based mobile navigation apparatus," there was a likelihood of confusion because these goods are complementary and similar to "automobiles." In other words, these devices are "aimed exclusively at the driver of a motorized vehicle travelling in public traffic areas."

Second, for the remaining goods, the Board of Appeal considered that there was no similarity with automobiles (which is pretty obvious with respect to "home cinema") but that the applicant was seeking to take unfair advantage of the distinctive character of the opponent's trademarks. The Board of Appeal found that the CARRERA trademarks had a reputation for "automobiles" in Germany and held that these trademarks "embody an image of luxury, high tech, high performance and success. As a result of its considerable reputation, there is therefore the risk that consumers will purchase the identically marked goods of the applicant just because they are attracted to these trade marks due to the image associated therewith".

The General Court

Mr. Hesse challenged the Board of Appeal's decision before the General Court, on 27 November 2014 ( Case T-173/11). The General Court affirmed the Board of Appeals, referring to its own case law according to which "goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking." Case T-316/07 Commercy v OHIM, Case T‑169/03 Sergio Rossi v OHIM, Case T‑31/04 Eurodrive Services and Distribution v OHIM, Case T‑420/03 El Corte Inglés v OHIM.

The European Court of Justice

As a last resort, Mr. Hesse appealed to the European Court of Justice. On January 21, 2016 , the ECJ (in Case C-50/15) rejected all of his claims.

Mr. Hesse argued to the ECJ that, in assessing the similarity of the goods, the courts below should have taken into account all the relevant factors relating to the goods at issue, not just whether they were "complementary." This argument seems consistent with the ECJ's landmark Canon case  of 29 September 1998 (Case C-39/97). In Canon, the ECJ held that in assessing the similarity of goods or services all the relevant factors relating to those goods have to be taken into account. These factors include, inter alia,  the nature of the products, their end users, method of use and whether they are in competition with each other or are complementary. The Canon decision suggests that several factors have to be taken into account when assessing the similarity of the goods in question.

However, the ECJ dismissed Mr. Hesse's claim on that point and ruled that "although the complementary nature of the goods at issue represents only one factor amongst several others — such as the nature, the method of use or the distribution channels of those goods — 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" In other words, according to the ECJ, the similarity between the goods in question may result from one factor only, the complementarity between the goods.

Insofar as this decision departs from Canon, it may represent a turning point in the assessment of the similarity between goods. It remains to be seen whether this trend will continue.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
12 Oct 2018, Other, Boston, United States

The New England Electricity Restructuring Roundtable has been meeting bimonthly since 1995 to discuss current topics related to important changes in the electric power industry in Massachusetts and throughout New England.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions