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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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German Federal Patent Court sees RED

On 8 March 2013 the German Federal Patent Court decide to refer a 'number of fundamental questions' relating to a colour trade mark for the colour red to the European Court of Justice for a preliminary ruling.  These questions stem from two related proceedings concerning a colour trade mark registration in the name of the German bank Sparkassen- und Giroverband (see left).

German Federal Patent Court:  Cases 33 W (pat) 103/09 and 33 W (pat) 33/12 (translation by the author, German original in brackets for ease of reference)

(1)  How well known to consumers does the colour red have to be, to remain protected as a trade mark? (‘Wie bekannt muss die Farbe Rot für die Verbraucher sein, damit sie als Marke geschützt bleiben kann?’)

(2) The German Federal Patent Court asks the European Court of Justice to determine the relevant level of recognition. (‘Das Bundespatentgericht fragt den Gerichtshof der Europäischen Gemeinschaften zum erforderlichen Bekanntheitsgrad.’)

The background of the proceedings is explained in the court’s press release of 8 March 2013, which can be retrieved from the court’s website by clicking here and which has been summarised and translated by the author below:

The colour red (HKS 13) has registered as a trade mark in the name of Sparkassen since 2007. According to Sparkassen's court submissions, it has been using this colour since the 1960ies and 1970ies as its corporate colour and it has regularly taken action against several other banks that also used the colour red; e.g. a trade mark infringement case is currently pending before the Higher Regional Court of Hamburg.

Two competing banks, namely Santander and Oberbank, have recently requested the German Patent and Trademark Office to invalidate Sparkassen’s colour trade mark registration.  Both banks have also used the colour red for a considerable time as their respective corporate colour.  However, unlike the Sparkassen banks, both banks are new to the German market. They rely on their freedom of movement and regard the trade mark registration as an unreasonable restriction to their access to the German market.  Sparkassen banks on the other hand refer to their “legitimate protection of trust” (Vertrauensschutz) based on the trade mark registration. The German Patent and Trademark Office rejected a cancellation. Following appeals by Santander and Oberbank, both proceedings are now pending before the Federal Patent Court.

As German trade mark law is based on harmonised European trade mark law the Federal Patent Court has decided to refer several fundamental questions in these proceedings to the European Court for a preliminary ruling. These include the question whether a sufficiently large majority of consumers would mentally link the colour bright red to Sparkassen, when used in the advertising of financial services without using supplementary references to Sparkassen.  The European Court is also asked to comment on the relevant number of consumers who would have to understand the colour as the symbol of a particular company, and the extent to which the interest of other banks to freely use of this colour is to be taken into account.  The Federal Patent Court also wishes the European Court to comment on the relevant time for this assessment: the time of application of the mark (in this case 2002) or the date of registration of the mark (in this case 2007) and how the matter will have to be assessed if the consumer perception at the relevant time can no longer be determined.

This promises to be an interesting case to watch...
Posted by: Birgit Clark @ 13.03
Tags: German Federal Patent Court, ECJ, colour mark,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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