Following a reference made by the German Federal Patent Court, the CJEU has handed out its decision relating to the acquired distinctiveness of colour trade marks. In general, trade mark applications for colours require the applicant to provide evidence to show that the colour distinguishes the applicant’s goods/services from those of others.
In this case, the German banking group, Deutscher Sparkassen-und Giroverband (DSGV) has been using a particular shade of the colour red as its corporate colour in Germany and registered it as a trade mark in 2007. Two competing banks, Oberbank AG and Santander, applied to invalidate DSGV’s German trade mark. Whilst the German Patent and Trade Mark Office dismissed the invalidity action, on appeal the German Federal Patent Court referred a number of questions to the CJEU for a preliminary ruling.
The CJEU essentially said that use of a mark following the filing date of an application is irrelevant. That is the relevant use must pre-date the application. In addition, the onus is on the trade mark proprietor to show that its colour mark has acquired distinctiveness.
Another question that was referred to the CJEU was whether in proving that a colour mark has acquired distinctiveness through use, it is necessary in every case that a consumer survey indicates a degree of recognition of at least 70%. The CJEU ruled that Member states cannot, under national law, require a certain percentage to be reached in a consumer survey to be a pre-requisite to show acquired distinctiveness of a colour mark because a court must conduct an overall assessment of the evidence at hand.
The Trade Marks Directive allows Member States to exercise an option (under Article 3(3)) for the possibility for relying on acquired distinctiveness after the application to be taken into account.
Given that the UK has exercised its option so that trade mark proprietors can rely on use of the mark post the filing date of an application to prove that the mark has acquired distinctiveness, the CJEU’s ruling on this point will be of limited application within the UK. There are similar provisions for community trade marks. The ruling does however reiterate the principle that when assessing acquired distinctiveness, all relevant circumstances must be assessed.
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