Red colour mark retained by Sparkasse!

The proceedings concerning the deletion of the red colour mark registered by the umbrella organisation of the Sparkassen financial group for financial services have come to an end! In final instance, the Federal Court of Justice (BGH) has rejected the deletion of the colour mark.

The proprietor of the German colour mark RED is the umbrella organisation of the Sparkassen financial group. In 2002, the mark was registered for it as an established sign for the services "finance, namely retail banking (banking services for private customers)".

The Spanish Santander banking group, which also uses the colour red for its banking services, filed an application for deletion with the German Patent and Trade Mark Office (DPMA) against the colour mark, as it did not wish to be prevented by Sparkasse from using the colour red for its own customary market presence.

The DPMA rejected this application for deletion, whereupon the Santander banking group lodged an appeal with the Federal Patent Court (BPatG). In the deletion proceedings conducted against the registration of the colour mark, the Federal Patent Court (BPatG) ordered the deletion of the Sparkasse RED, as an established sign had not existed at the time of application. At the time of the application for deletion, equally, insufficient establishment of the mark in trade had not been proven.

Decision of the Court

The First Civil Senate of the Federal Court of Justice (BGH) responsible for trade mark law issued a ruling on 21.07.2016 – Az. I ZB 52/15 (Press Release) – deciding that the colour mark RED is not to be deleted in the German trade mark register and thereby overturning the decision of the Federal Patent Court (BPatG).

The Federal Court of Justice (BGH) stated that abstract colour marks are generally not distinctive and therefore not eligible for registration, as the relevant public regularly perceives a colour only as a decorative element and not as a product identifier. However, this is to be assessed differently if the colour mark has achieved establishment in the market.

Sufficient for an established reputation of abstract colour marks is, as with other forms of mark, that the majority of the relevant public perceives the colour as an identifier for the goods or services for which the mark claims protection. The parties submitted numerous trade mark surveys in the proceedings on the question of establishment in the market, which justified the assumption that the colour mark RED had achieved an established reputation for financial services at the time of the decision on the application for deletion in 2015. In such a case, the colour mark may not be deleted.

Conclusion

The majority of the relevant public recognises, from the red market presence of the bank alone, by means of the colour that it must be a Sparkasse. Therefore, the application for deletion by the Santander banking group against the registration of the colour mark RED in the German trade mark register was unsuccessful.