Colour marks: New rulings by the CJEU bearing on registrability

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

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