Three Banks See Red

Whether the colour mark RED (figureless) registered with the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt) for savings banks is actually assigned to savings banks by the relevant circles of trade or whether the association depends on other circumstances is currently being examined by the Federal Patent Court (BPatG) at the instigation of two competitors who also have red as their corporate colour. Santander and Oberbank argue that they have also been using the colour red for a very long time and have filed a request to delete the colour mark of the savings banks association.

In the context of their cancellation application, the competing banks rely on the freedom of establishment, the restriction of access to the German market associated with the colour mark, and the lack of assignment of the figurelesscolour markRED to the savings banks. The trade mark proprietor counters this with the protection of legitimate expectations that it has obtained through the registration of its mark.

The German Patent and Trade Mark Office (DPMA) rejected the cancellation of the mark with theRegister-Nr. DE30211120whereupon the BPatG is now dealing with the matter in the appeal proceedings (Az. 33 W (pat) 103/09 and 33 W (pat) 33/12) against the decision. In the opinion of the responsible judges, the decision depends on the following fundamental questions:

• Does a sufficiently large number of consumers understand the colour red as such without supplementary signs as a distinctive sign of the savings banks?
• How large must the proportion of consumers be who understand the colour as the sign of a specific undertaking?
• Is the relevant date the date of application of the mark (2002) or the date of registration (2007)?
• At whose expense does the failure to clarify consumer perception at the relevant date operate?

Sincetrade mark lawis harmonised throughout Europe on the basis of the EU Trade Mark Directive, the BPatG has now referred these questions to the Court of Justice of the European Union (EuGH) by decision of 08.03.2014 for a preliminary ruling.

Conclusion

Whilst the accompanying arguments of the applicants (freedom of establishment, market access restrictions) are unlikely to succeed because these are inherent consequences of trade mark law, the BPatG opens a new chapter with the preliminary ruling procedure it has initiated. Until now, disputes concerning colour marks have essentially revolved around the question of basic distinctive character, which is what the first referred question aims at, but not around its manifestation. However, it is apparent that the further questions to the EuGH are intended to clarify precisely this. It remains to be seen how the BPatG will deal with the findings obtained in Luxembourg. Fundamentally, nothing else should apply to colour marks than elsewhere in trade mark law: first come, first served.