Legal Disputes Concerning Abstract Color Trademarks
Abstract color trademarks–i.e. a single color without any figurative limitation–have been coveted by companies as identifying characteristics for years, since it cannot be denied that the chosen colors have some distinctive character. This estimation is especially confirmed by the approval of certain colors as an indication of the origin of certain goods and services by costumers.
A well-known example of this fact is “Langenscheidt-Yellow” from the Munich-based publisher Langenscheidt. Both the German Federal Patent Court and the German Federal Supreme Court have objected to an invalidation of the trademark as, especially in the field of printed bilingual dictionaries, the publisher is known sufficiently so that Langenscheidt-Yellow cannot be accused of lacking distinctive character. The Federal Supreme Court states (see http://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&nr=71097&pos=0&anz=1) (German text):
At least with respect to the business field of bilingual dictionaries, it can be assumed that, taking the noticed duration of using the color as a registered trademark, the number of sold samples of bilingual dictionaries and advertising expenditure made by the trademark owner into account, the latter has, in its function as market leader with a market share of more than 60%, characterized the habit of identification in the niche segment in such a way that a cover designed in yellow is perceived as a trademark.
The dispute on color trademarks has recently continued with two further examples, “Sparkasse-Rot” (German savings bank red) and “Nivea-Blau” (Nivea Blue). Although, in the meantime, many companies use the red, like Coca-Cola or Vodafone, for example, the savings bank uses red in the German financial sector. And now, it has to be decided whether the detectable acquired distinctiveness among the people questioned is significant enough to actually confirm the indication-of-origin function of the color trademark “Sparkasse-Rot”. Whereas the German Federal Supreme Court believes that a degree of market acceptance of at least 70 % is necessary, the European Court of Justice (ECJ) claims a more detailed examination of the case. According to the court, not only the result of a consumer survey can be taken into consideration when it comes to deciding on the acquired distinctiveness. It further states that both the market share of the trademark, and the duration of its use or the advertising expenditures given out by the owner of the trademark have to be taken into account when examining whether a significant number of people recognize a color as a trademark (see http://curia.europa.eu/juris/document/document.jsf?text=&docid=153812&pageIndex=0&doclang=DE&mode=lst&dir=&occ=first&part=1&cid=23926) (German text).
It is now the subject of the German Federal Patent Court to solve this problem stated by the ECJ. It remains to be seen whether the German Association of Savings Banks will have fewer difficulties in defending its trademark against the Oberbank and Santander Group.
A similar dispute concerns the color trademark “Blue” (Nivea Blue from Beiersdorf), which has been attacked by Unilever. This case also concerns the degree of acquired distinctiveness, which has surprisingly been set at 75% by the German Federal Patent Court. The court has thus rejected the recognition value of Nivea Blue of 58% by consumers, which had earlier been proven by Beiersdorf (FN: 24 W (pat) 75/10).
In its decision dated July 9, 2015 I ZB 65/13: Nivea Blue (complete text of the decision is not yet available), the German Federal Supreme Court has now revoked the degree of acquired distinctiveness of 75% requested by the German Patent Court. Referring to a decision by the ECJ, abstract color trademarks can be protected if more than half of the consumers questioned recognize the color as a typical indication of the company in the respective section.
After rejection of the case back to German Patent Law and due to several formal mistakes regarding the Beiersdorf survey, a survey conducted by German Patent Law has now to clarify which recognition value Nivea Blue actually has among its consumers.