On 7
February 2002 Deutscher Sparkassen – und Giroverband eV filed German trademark
application no. 30211120, reproduced below.
The
trademark consisted of a colour, red, specifically HKS 13, and it was granted
registration on 11 July 2007 for specified financial services for a commercial
bank in Class 36.
Contesting
the grant of the said mark, Oberbank and Banco Santander applied for a
declaration of invalidity. The German court ultimately decided to stay the
proceedings and refer three questions to the Court of Justice of the European
Union (CJEU) for preliminary rulings, issued in the CJEU's judgment of 19 June
2014 (C-217/13 and C-218/13).
1. By its
first question the referring court asked the CJEU what degree of recognition
must there be in the trade circles concerned for a trademark to be regarded as
having acquired distinctive character. Specifically, it asked whether a
consumer survey showing that the mark had achieved a degree of recognition of
at least 70 % is required.
The CJEU
first pointed out that to determine that distinctive character has been
acquired through use, it is necessary to carry out an examination by reference
to the actual situation and make an overall assessment of the evidence showing
that the trademark is able to identify the goods or services concerned as
originating from a particular undertaking. The following, inter alia, may be
taken into account for this purpose: market share, intensity of use,
geographical scope of use, duration of use, etc. Where the competent authority
has particular difficulty in assessing distinctive character, it may order a
consumer survey, and it will be for that competent authority to determine what
percentage is to be regarded as being sufficiently representative. However, the
results of such a consumer survey cannot be the only decisive criterion for
assessing distinctive character.
2. The
second question was whether in the context of invalidity proceedings it is
necessary to examine whether the mark had acquired distinctive character before
the date of filing of the application. In the instant case the proprietor had
maintained that distinctive character had been acquired before the date of
registration but after the date of filing of the application.
The CJEU
replied to this question by pointing out that the proprietor needed to have
proven that the mark had acquired distinctive character before the date of
filing of the application unless national law of the country concerned provided
for a later date. This does not preclude the competent authority from taking
into account evidence which, though subsequent to the date of filing of the
application, enables conclusions to be drawn as to the situation as it was
before that date.
3. The
third question asked who has to prove that the trademark had acquired
distinctive character before the filing date of the application in order to
prevent a declaration of invalidity.
The CJEU replied that the burden of proof is to be
borne by the proprietor of the mark, not by the applicant for invalidity. Thus,
if the proprietor of the trademark fails to show that distinctive character had
been acquired before the date of filing, the mark is to be declared invalid.
Author: Marta Rodríguez
Visit our website: http://www.elzaburu.es/
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