On 19 June 2014, the Court of Justice of the European Union ("ECJ") handed down a preliminary ruling in joined cases C-217/13 and C-218/13 on the registration (and invalidation) of a colour trade mark.

The procedure giving rise to the preliminary ruling relates to the registration by Deutscher Sparkassen-und Giroverband eV ("DSGV") of a specified shade of the colour red for retail banking services under Class 36 of the Nice Agreement. The trade mark was registered on 11 July 2007 after it had been granted on appeal by the Deutsches Patent- und Markenamt.

Oberbank AG, an Austrian retail bank, and Banco Santander, a Spanish retail bank, each initiated invalidation proceedings against DSGV's colour trade mark. Both banks had used the colour red on their domestic markets before and had recently entered the German market.

In this context, a number of questions were referred to the ECJ. They related to the requirement that a colour trade mark, which is unlikely to be intrinsically distinctive with respect to products or services, must be shown to have acquired distinctiveness through use before the trade mark can be registered. In the absence of such acquired distinctiveness, the trade mark application will be refused or the trade mark can be invalidated (Article 3(1)(b) of EU Directive 2008/95 of 22 October 2008 to approximate the laws of the Member States relating to trade marks – the "Trade Mark Directive").

First, the ECJ was asked whether it was required for the applicant to demonstrate in a consumer survey that at least 70% of the relevant public associated the sign with the trade mark applicant.

On this first question, the ECJ held that the Trade Mark Directive precludes an application of national law which requires that a consumer survey indicates a degree of recognition of at least 70% in order to demonstrate that the sign has acquired a distinctive character through use.

The second and third questions related to Article 3(3) of the Trade Mark Directive which provides that:

A trade mark shall not be refused registration or be declared invalid [...] if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.

The ECJ held that the acquired distinctiveness to which the first sentence refers must be acquired before the date of the filing of the application for registration of the mark.

Finally, the ECJ ruled on the situation where national law has not implemented the option provided for in the second sentence of Article 3(3) of the Trade Mark Directive, i.e., that acquired distinctiveness after the application date can be taken into account. The ECJ held that in such a case, it is not impossible that a trade mark is invalidated if the trade mark applicant failed to show that its trade mark had acquired distinctiveness prior to the application date.

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