ECJ sees red as German court refers questions on colour mark

The German Federal Patent Court has referred various questions concerning the inherent registrability of the abstract colour red to the Court of Justice of the European Union (ECJ) (Serial Nos 33 W (pat) 103/09 und 33 W (pat) 33/12, March 8 2013). At the time of writing, the full decision and the specific wording of the questions were not yet available, and the Federal Patent Court had only issued a press release. The case deals with important questions concerning the registration of colour marks.

The Deutscher Sparkassen- und Giroverband eV is the association of German savings banks. The banks have been using the colour red for just over 50 years. They began by using the colour red on the cover of their account books, and then also used it in advertising and other documents relating to their financial services. In most cases, the colour red formed the background for other signs and marks, such as the stylised letter 'S', which is registered and used by the savings banks.

Deutscher Sparkassen- und Giroverband filed a trademark application for the abstract colour red (tone HKS 13) in February 2002. More than five years later, the mark proceeded to registration under No 302 11 120 in respect of various services in Class 36 of the Nice Classification on the grounds that it had acquired secondary meaning. The applicant had to show, based on evidence and possibly a survey, that the abstract colour red had acquired distinctiveness for its services.

Since the registration of the mark, Deutscher Sparkassen- und Giroverband has tried to enforce it against other banks and financial institutions using shades of red. It was successful in some instances, and other cases are still pending. In infringement proceedings which are pending before the Hamburg Court of Appeals, the defendant filed a cancellation action against the colour mark No 302 11 120. The Court of Appeals stayed the proceedings, and this cancellation action (as well as a second cancellation action) is now pending before the Federal Patent Court, as the Cancellation Division of the German Patent and Trademark Office rejected the motions for cancellation in first instance.

The 33rd Senate of the Federal Patent Court heard the two cancellation actions together; according to some press information, there was a court hearing at the end of February 2013. The Federal Patent Court did not issue a final decision on the cancellation actions, but has now referred various questions to the ECJ for a preliminary ruling. The full wording of the questions is not yet available, but according to the court's press release, the following questions were put to the ECJ:

• What would be a sufficient level of awareness among consumers for them to perceive the colour red as a trademark of the savings banks when it appears on its own, without additional signs and indications of the savings banks (such as the stylised 'S')?
• What must be the percentage of consumers perceiving a colour as the sign of a specific enterprise to justify registration?
• To what extent must the interest of other banks and financial institutions in freely using a colour be taken into account?
• What is the relevant date for such assessment: the filing date (here, 2002) or the date of registration of the mark (here, 2007)? And who has the burden of proof in cases where the consumers’ perception can no longer be determined after a long period of time?

These are important questions concerning the registrability of abstract colour marks and, in particular, of basic colours such as red. It remains to be seen whether the ECJ will accept to answer these questions, as it has been the practice of the ECJ not to state specific figures or percentages with regard to acquired distinctiveness. The ECJ always points out that all relevant factors must be taken into account and, therefore, some of the questions might not be answered as specifically as they were formulated in the press release. In any case, the questions referred by the German court are fundamental, and guidance from the ECJ will be welcome.

Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg