Two recent judicial decisions in Germany have the potential to
limit the scope of protection conferred by color trademark
registrations. Since color marks lack inherent distinctiveness and
are, therefore, not per se registerable, the issue, in
both proceedings, turned on whether the applicant had submitted
actual evidence of acquired distinctiveness.
Back in 2013, the Federal Patent Court referred to the CJEU for
a preliminary ruling several questions on the interpretation of
Art. 3 of the Trademarks Directive (2008/95/EC). One of the questions was whether
a 70 percent brand recognition was necessary to acquire distinctive
character through use. In its response to this question, the CJEU
(C-217/13 and C‑218/13) held, inter
alia, that it was not possible to merely refer to
predetermined percentages to support the conclusion that a
distinctive character has been acquired through use. While a
consumer survey may be one of the factors considered, it was not
the only decisive criterion.
Following the CJEU's decision, the Federal Patent Court (25 W (pat) 13/14) ruled on 8 July 2015 that a
certain shade of red is to be deleted from the trademark register.
It did so mainly because the Court deemed survey evidence presented
by the proprietor of the mark to be of insufficient quality –
even though a 67,9 percent figure was not a ground for exclusion
per se. In the Court's opinion, the conductors of the
survey used so-called "leading questions" which may have
suggested the desired answer. An appeal against this decision is
pending before the Federal Court of Justice and is expected to
further clarify to what extent surveys conducted by the parties
themselves (or party-hired expert witnesses) may be suitable means
to demonstrate the necessary degree of association.
In a second case, the question once again turned on the issue of
whether survey evidence presented by a party was of sufficient
quality to prove a color mark's acquisition of distinctive
character through use. While, on 9 July 2015, the Federal Court of
Justice (Press Release No. 112/2015) stated that, in
principle, a particular type of blue could have acquired
distinctiveness through use if 50 percent of the relevant public
associated it with the goods and services for which it has been
registered, a party-submitted survey, showing a degree of
association of 58 percent, was considered insufficient proof and
methodologically flawed. According to the Court, since the
packaging of the goods concerned is typically a combination of
white and blue, all test persons should have been presented with a
sample showing only the blue color instead of a blue card framed in
While the importance of colors in corporate branding remains
undisputed, these decisions illustrate the problems that go along
with registering (and enforcing) color trademarks. Even though the
Federal Court of Justice stated that 50 percent, in principle, may
be sufficient to demonstrate the necessary degree of association
among the relevant public, the qualitative requirements that need
to be placed on survey evidence (e.g. design, methodology) have not
yet been established with sufficient clarity. The German rules of
civil procedure are somewhat silent on that matter.
Tags: Acquired Distinctiveness, BGH, CJEU,
Color Trademark, Survey Evidence
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