Lutter & Partner GmbH and Kurt Hesse have been forced to consider a change of direction on their application for registration of the word Mark CARRERA as a result of a European Board of Appeal decision.
Lutter & Partner GmbH were keen to register the Mark CARRERA as a Community Trade Mark for use with satnavs in Class 9 (navigation equipment). An opposition was filed on the ground of likelihood of confusion with an earlier word mark CARRERA registered in Class 12 (vehicles), the (understandable) assertion being that the Class 12 mark had a reputation in the Community to which a mark in Class 9 would be detrimental.
The Board of Appeal found that the signs were identical and that there was a likelihood of confusion which would take advantage of the distinctive character of the earlier Mark. The public using mobile navigation devices is the same as that using vehicles and it was said that “a functional complementarity between them exists”. The elements present on the satnav’s screen were obviously intended for use by vehicle drivers. There is a “transfer of image” of the vehicle Mark in favour of the navigation equipment Mark and thus a likelihood of confusion. Kurt Hesse and Lutter & Partner GmbH cannot therefore register the mark CARRERA for use with navigation equipment and will need to make a U-turn in their marketing strategy.
For guidance on trade mark registration and how best to protect your intellectual property against unfair competition and passing off, contact Tony Catterall, Head of the Intellectual Property Team at Taylors, on 01254 297900 or via email at firstname.lastname@example.org. Taylors is the only North West based firm to have been appointed as a legal affiliate to the National organisation, Anti Copying In Design (“ACID”).