The dispute over red continues…

The dispute between the Sparkassen and Spanish banking group Santander over the colour mark red is entering the next round. The Federal Court of Justice (BGH) had to decide whether Santander may continue to use the red colour tone.

The dispute between the parties has been occupying the courts for years. Sparkasse registered the colour red HKS 13 with the DPMA in 2002. The mark was registered for banking services for private customers in class 36. The Santander Bank from Spain has been using almost the same red tone HKS 14 worldwide since the end of the 1980s. The Sparkassen do not welcome this and want to prohibit Santander from using the colour on the German market. They take the view that the Spanish bank's use of the red colour infringes the rights of Sparkassen in the contourless colour mark in Germany. The Regional Court (LG) upheld the action in part. The Higher Regional Court (OLG) partially confirmed the first instance judgment and temporarily stayed proceedings in part.

In turn, Santander applied to the DPMA for cancellation of the Sparkassen mark. The Federal Patent Court (Bundespatentgericht) upheld the action in July of this year and ordered cancellation of the mark (Az. 25 W(pat) 13/14). The decision is, however, not final. An appeal proceedings is pending against the decision.

Court decision

The BGH has now by judgment of 23 September 2015 (Az. I ZR 78/14) set aside the appellate judgment and remitted the matter to the Higher Regional Court (OLG) Hamburg. The dispute must now be re-examined there. The BGH criticises the failure of the OLG to examine whether the abstract colour mark of Sparkassen is a mark well-known in Germany with which the logo of Santander in the context of its online presence could be confused. If this is the case, Sparkasse can take action against Santander's use of the red colour tone, even if there should be no likelihood of confusion. The OLG must now make the necessary findings on this. The BGH rejected a suspension of the present proceedings pending a final decision in the cancellation proceedings.

Conclusion

The question of whether Santander may continue to use red in its market presence remains unanswered. The decisive factor will be whether the colour mark of Sparkassen is well-known in Germany.