• Skip to main content
  • Skip to primary sidebar
  • Skip to footer
+49 (0) 69 / 606 278 – 0
[email protected]
Contact form
Patent- & Rechtsanwaltskanzlei

Patent- & Rechtsanwaltskanzlei

  • Deutsch

+49 (0) 69 / 606 278 – 0

  • Facebook
  • Twitter
  • Instagram
  • LinkedIn
  • xing
  • Email
MENUMENU
  • Services
    • Advice On Protective IP Rights
    • Patent Application /TM Registration
    • Enforcement Of IP Rights
    • Defence Against IP Rights Enforcement
    • Costs
  • Company
    • Fields of Law
      • Patent Law
      • Utility Model Law
      • Employees’ Inventions
      • Trademark Law
      • Design Law
      • Trademark and Product Piracy
      • Expert Opinions
    • Our Law Firm
      • Dr. Karl-Hermann Meyer-Dulheuer
      • Dr. Tim Meyer-Dulheuer
      • Dr. Klaus Zimmermann
      • Zhichao Ying
      • Clara Elinor Grünewald
    • Commitment
  • Contact
    • Where To Find Us
    • Write us!
    • Request call back
  • Blog

Victory: German Savings Bank Keeps Colour Red

16. August 2016

On 21 July 2016, the German Federal Supreme Court (BGH) gave its verdict on the validity of an abstract red colour mark of the umbrella organization of German savings banks (“Sparkassen”). It seems like the BGH is addressing a new colour every year.

The Sparkassen use this colour for their business since several decades e.g. on signs outside their branches, for their red savings books and marketing material. (Decision I ZB 52/15 – Sparkassen-Rot).

The German Sparkassen had been involved in a lawsuit against the Spanish bank Santander for years about the usage of the colour red. The BGH decided to keep saving the colour trademark for the Sparkassen in Germany and refused Santander’s application to delete the colour trademark which was a great win for the the Sparkassen.

 

How did this happen?

The abstract colour trademark „Rot“ (HKS 13) (red) was first filed in Germany in 2002, but was rejected. The Sparkassen restricted the specification to certain financial services in class 36 and submitted survey evidence on the acquired distinctiveness of the red colour for these services. It is registered since 2007, Sparkassen-finance group being its holder.

The PTO accepted the shown high public awareness of the colour red being associated with the Sparkassen and registered the colour trademark because of the bank’s reputation. Nevertheless not only Santander but several other banks applied for cancellation of the mark for lack of inherent and acquired distinctiveness. They all use the same colour for their corporate design as well.

 

The first court decision

The German Federal Patent Court (BPatG) paused the lawsuit in June 2014 and started a request for a preliminary ruling to the European Court of Justice (ECJ). In ECJ’s decision (C-217/13 and C-218/13) the judges set out the colour trademark’s cancellation, which was then suspended through the BGH because of an appeal on the point of law by the colour trademark holder (Sparkasse).

 

BGH’s decision

The German Federal Supreme Court indicted absolute protection obstacles because of insufficient distinctiveness. Abstract colour trademarks are not distinctive in general and not registrable according to § 8 Abs. 2 Nr. 1 MarkenG. A colour is often seen as a decorative element instead as a product label.

The trademark holder justified the acceptance of the acquired secondary meaning at the time of the decision on the application for cancellation in 2015 through various opinion research reports about the acquired secondary meaning. This means that the consumers connect the colour red as a product label with the Sparkassen, due to their consistent corporate appearance. In this case according to § 50 Abs. 2 Satz 1 MarkenG the colour trademark may not be cancelled.

In his sentence the BGH made clear that colours are not product labels and due to their insufficient distinctiveness it is also not possible to register them as trademarks. The only exception is possible, if the colour did establish in commercial traffic per se and the public is seeing a hallmark in the colour.

BGH’s decision shows how a trademark registered in Germany can last even in times of a transborder European financial sector. The consequences for Santander’s future brand presence in Germany are not yet predictable.

The BGH decision came as quite a surprise – the standard procedure under German law would have been for the court to provide guidance to the previous instance, here the BPatG, and to refer the case back to that court for a decision. The full decision, once published, will be an interesting read.

 

Do you want to protect your colour trademark aswell?

We would be pleased to help you in your case with our longtime experience in Brand Registration. Make a free and call without any obligation today and let us give you advise.

 

CTA-Callback-EN

Sources: bundesgerichtshof.de | tagesschau.de

Bildquellen: dsgv.de | pixabay.com

  • share  
  • share 
  • share 
  • tweet  
  • share 

Category iconTrademark Law Tag iconBGH,  BPatG,  Santander,  Trademark

Reader Interactions

Leave a Reply Cancel reply

Your email address will not be published. Required fields are marked *

Primary Sidebar

More articles about: Trademark Law

All articles

Blog Menu

  • Design Law
  • Healthcare & Lifesciences
  • International Intellectual Property
  • Licenses
  • News from our law firm
  • Overall
  • Patent Law
  • Product- and Trademark piracy
  • Trademark Law
This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Recent Posts

  • Action against a patent already expired 26. February 2021
  • Design protection in China: Amendment 2021 25. February 2021
  • EPO practice of national patent offices – more uniform 18. February 2021
  • BGH: Black Forest ham – not only packaged in the Black Forest 16. February 2021

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Das könnte Sie auch interessieren:

16. February 2021
BGH: Black Forest ham – not only packaged in the Black Forest

BGH: Black Forest ham – not only packaged in the Black Forest

16. February 2021
UK trademark after Brexit: earlier UK trademark in opposition

UK trademark after Brexit: earlier UK trademark in opposition

11. February 2021
EU figurative marks: Panthé figurative mark – a panther mark?

EU figurative marks: Panthé figurative mark – a panther mark?

9. February 2021
BGH ruling: Classe E versus German E-Klasse

BGH ruling: Classe E versus German E-Klasse

4. February 2021
Protecting domain names as trademarks

Protecting domain names as trademarks

1. February 2021
UK ruling: Parallel Trademarks in Amazon Sales

UK ruling: Parallel Trademarks in Amazon Sales

Footer

Contact

Franklinstr. 61-63
D-60486 Frankfurt am Main
Germany

+49 (0) 69 / 606 278 – 0
+49 (0) 69 / 606 278 – 199
[email protected]

Customer Reviews

Meyer-Dulheuer MD Legal Patentanwälte PartG mbB Patentrecht, Markenrecht, Eigentum hat 4,78 von 5 Sternen 23 Bewertungen auf ProvenExpert.com

Fields of Law

  • Patent Law
  • Utility Model Law
  • Employees’ Inventions
  • Trademark Law
  • Design Law
  • Trademark and Product Piracy
  • Expert Opinions
  • Costs

Law Firm

  • Request non-binding call back
  • Info secure emails
  • Company
  • Our Law Firm
  • ISO Certificate
  • Privacy Policy
  • Data handling for clients
  • Imprint

Follow Us

  • Facebook
  • Twitter
  • Google+
  • LinkedIn
  • xing
  • Email

Newsletter Signup

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

© Patent- & Rechtsanwaltskanzlei Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Kontaktformular

 

Rufen Sie uns an, schicken Sie uns eine Mail oder füllen Sie das Kontaktformular aus.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form

Contact Form

 

Give us a call, send us an email or fill out the contact form.

+49 (0) 69 / 606 278 – 0
[email protected]

This form uses Google Recaptcha.

You must accept cookies from Google recaptcha to use this form.

More information can be found in our privacy policy.

load form