Last 19th of June, the Court of Justice of the European Union (hereinafter “ECJ”) has given an answer to a preliminary question asked by the Bundespatentgericht (Germany), regarding the distinctive character acquired through use by a trademark consisting of one simple colour.
In the case at hand, the company DSGV filed an application in 2002 for the registration of a trademark consisting of the colour red HKS 13 without contours, for a range of products and services. The German Patent and Trademark Office (hereinafter “DPMA”) rejected this application in 2003 but had reversed its decision in 2007 on the grounds that the trademark in question was back then well established in the concerned sectors. From that date on, the trademark was registered for financial services and retail banking (class 36). However, in 2008 Oberbank brought an action for declaration of nullity against DSGV, on the grounds that the trademark was inherently devoid of any distinctive character. The DMPA has responded that, while acknowledging the argument of Oberbank, DSGV had however acquired distinctive character through use, referring to an opinion poll in 2006. Two other bank companies, Banco Santander and Santander Consumer Bank, nevertheless formulated in 2009 requests for a declaration of nullity based on similar arguments to those of Oberbank, which the DPMA rejected.
The Bundespatentgericht, hearing the case, decided to have the proceedings pending and referred a preliminary ruling to the Court of Justice of the European Union on the question of how to appreciate the acquired distinctiveness of a trademark consisting of a colour. The Court provided an answer that could be discussed from different points.
First and foremost, the purpose was to determine the degree of recognition by the public that may participate to the establishment of a distinctive character. The German Patent and Trademark Office argued that an opinion poll giving a degree of brand recognition of 70% was necessary to recognize the latter’s acquisition of distinctive character. However, the Luxembourg Court challenged the German jurisprudence and stated that “the circumstances in which the requirement concerning the acquisition of a distinctive character through use […] may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages” . Thus, only the overall assessment of the evidence may be useful in this demonstration, the survey being only one element among others, and not mandatory.
In addition, it was also a priority to clarify when, before or after the date of filing of the registration application, distinctiveness must be shown. It is therefore necessary according to the Court, referring to Directive 2008/95 to approximate the laws of the Member States relating to trade marks, “to assess whether that mark has acquired a distinctive character through use, it is necessary to examine whether such character was acquired before the date of filing of the application for registration of that mark” . A certain margin of appreciation, however, is left to the Member States in order to change this starting point if they consider it important.
Finally, the Bundespatentgericht wondered about the burden of proof in invalidity proceedings. The Court noted that the burden of proof should lie with the brand owner who invokes the distinctiveness of its brand, because he is in the best position to provide the documents and evidence necessary to prove so. If the latter does not provide sufficient evidence, then the invalidity of the trademark is the only possible outcome in such a procedure.
Besides these details, the Court of Justice of the European Union confirmed the possibility to register a trademark that corresponds to a “colour without boundaries.” However, this situation has raised questions in the past and continues to do so. If we had to take one example, it would be the “Deutsche Telekom’s magenta colour” case. In 2008, Deutsche Telekom asked Brutele and Tecteo to stop using the color magenta in their logo and advertising products, relying for this purpose on the registration of the color mark telemagenta Benelux as its logo. Many designers and artists have rebelled against this possibility of take-over by one company of an essential asset in their profession. In February 2014, the judges of the Commercial Court, however, finally decided that the color telemagenta was not an invention of Deutsche Telekom and its simple use could not be regarded as a distinctive sign. The registrations of the colour mark were cancelled and Deutsche Telekom was obliged to bear the costs. These two cases illustrate the complexity of the issue, and certainly announce imminent developments in trademark law.
Solène Hamon – Brigitte Spiegeler
 Paragraph 44, CJEU, Joined cases C-217/13 and C-218/13, Oberbank AG, Banco Santander SA, Santander Consumer Bank AG v. Deutscher Sparkassen- und Giroverband eV, 19 June 2014
 Paragraph 61; ibid