Federal Supreme Court considers acquired distinctiveness in Nivea Blue case


The German Federal Supreme Court has reversed a decision of the Federal Patent Court in a case involving the ‘Nivea Blue’ mark (Nivea Blue, Case I ZB 65/13, July 9 2015).

German company Beiersdorf AG is the proprietor of the German trademark No 305 71 072, registered in 2007 on the basis of acquired distinctiveness. The mark consists of a single colour (blue), defined as Pantone 280C, and represented as follows:

The mark is registered for skin and body care products in Class 3 of the Nice Classification. Unilever, a competitor, requested the cancellation of the registration on the ground that it had been granted erroneously.

At first instance, the Cancellation Division of the German Patent and Trademark Office granted the request. The Federal Patent Court, in a decision of March 19 2013, confirmed the cancellation. The Federal Patent Court considered that the degree of public recognition of the mark, as evidenced by a survey carried out in 2006 (which showed a degree of recognition of 58%) was not sufficient. Rather, for a single colour, the degree of recognition should be at least 75%.

In its decision of July 9 2015, the Federal Supreme Court reversed and remanded, finding that a degree of public recognition of over 50% was sufficient to show acquired distinctiveness.

The court referred to the decision of the Court of Justice of the European Union (ECJ) dated June 19 2014, Banco Santander and Oberbank v Deutscher Sparkassen und Giroverband (Joined Cases C-217/13 and C-218/13) (Sparkassen Rot), in which the ECJ had confirmed its earlier rulings that no distinction should be made between categories of marks as regards the requirements for showing acquired distinctiveness, and had rejected the notion that, in all cases involving single colour marks, at least 70% of the public must recognise the colour as a mark.

As regards the requirement that the use made of a mark to prove acquired distinctiveness must be use “as a trademark”, the German Supreme Court held that, where it has been proven that over 50% of the public recognise the mark by means of a proper survey, this would allow the conclusion that use of the mark - here, the colour blue - was made not as decoration, ornamentation or background, but as a trademark. The court referred to its earlier case law on the same issue where three-dimensional marks were involved. The court stated that the same rules must apply to abstract colour marks.

The case was remanded to the Federal Patent Court, with additional instructions as to the examination of acquired distinctiveness for abstract single colour marks.

First, as regards the colour itself, the interviewees in the survey should be shown the colour on its own, and not reproduced on a white sheet of paper with a white margin. This was necessary because it could not be excluded that the combination of white and blue, rather than the single colour blue, was identified by the interviewees.

Second, the product category “skin and body care products” was too broad, because it comprises many different sub-categories, such as hair care, skin care, dental care, cosmetics, shower and bath products, deodorants, soaps, and aftershave products. These products are so diverse that they cannot be grouped together as a single market. Referring to a broad category in a survey may not be appropriate to prove acquired distinctiveness in all the sub-categories.

The Nivea Blue decision faults the Federal Patent Court for setting the barrier too high with regard to acquired distinctiveness (secondary meaning) for single colour marks. However, the Federal Supreme Court did not question the manner of proving acquired distinctiveness – ie, by means of an opinion survey. This remains the “best evidence” in German practice, regardless of the scepticism expressed by the ECJ in Chiemsee (Joined Cases C-108/97 and C-109/97) and again in the Sparkassen Rot decision.

Of practical relevance are the instructions given to the Federal Patent Court on remand. In a new survey (which will in any event be necessary), the broad product category (skin and body care products) will have to be broken down. In addition, the colour must be shown to the interviewees without any visible white margin. This is significant because Beiersdorf usually sells its Nivea products in a blue-and-white get-up, but the registration is for blue only.

Alexander von Mühlendahl, BARDEHLE PAGENBERG, Munich

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