The 1st Civil Panel of the German Federal Court of Justice which is responsible for trademark law among other matters, ruled that the lawsuit for the usage of the color red by bank Santander is to be renegotiated before the Higher Regional Court.
The plaintiff, Deutscher Sparkassen- und Giroverband, is the German umbrella association of the savings banks finance group including all savings banks which run 16,000 branches in Germany and offer banking services to private clients. The savings banks in Germany use the color red for marketing purposes since various decades. The plaintiff is the owner of the registered color trademark „red“ (HKS color 13) for banking services for private clients since 2002.
The defendant 2 is the parent company of the internationally operating Spanish finance group Santander, the biggest finance group in the Eurozone. It runs a branch in Frankfurt (Frankfurt am Main) and has the permission to run banking businesses in Germany. Its subsidiary, defendant 1, runs some 200 branches in Germany. Since the last years of the 1980’s, defendant 2 uses the color red for its market presence in numerous countries. Since the year 2004, defendant 1, also has been using the color red. The defendants‘ logos contain a white flame on a red rectangular background plus the white lettering „Santander CONSUMER BANK“ or „Santander“ (defendant 1) or „Grupo Santander“ (defendant 2). The Office for Harmonization in the Internal Market dismissed defendant 2’s petition for registering a red coloring as community trademark for the internal market with protection in the member states of the European Union in 2009.
The parties struggled over the question if the defendants violated the plaintiff’s right to a shapeless red color trademark by using red color for their market presence.
The Regional Court granted the lawsuit against defendant 1 and dismissed the lawsuit against defendant 2. The Higher Regional Court confirmed the Regional Court’s ruling by a partial verdict, as far as the lawsuit against defendant 2 is dismissed and suspended the appeal against defendant 1 temporarily until the German Patent and Trademark Office decided about the defendants’ petition for deleting the color trademark red. The Federal Patent Court ordered the deletion of the plaintiff’s color trademark red by means of it’s ruling of July 8, 2015. This decision, however, is not final and the Civil Panel is dealing with the present appeal on a point of law against the Federal Patent Court’s decision.
The Federal Court of Justice rescinded the Higher Regional Court’s ruling against defendant 2, the Spanish parent company, and redirected the case to the Higher Regional Court. The Federal Court of Justice refused a suspension of the present infringement procedure until the final verdict about the defendants‘ petition to delete the plaintiff’s red color trademark as the result of the cancellation proceedings cannot be predicted. It assumed that the Higher Regional Court did not have the permission to decide about the lawsuit against defendant 2 alone because in continuation of the process, partly the same questions would come up with respect to both defendants and the lawsuit against both defendants needed to be ruled formly to avoid contradictory decisions.
Furthermore, the Federal Court of Justice assumed that trademark and labelling law related claims to forbearance, in particular from § 14 paragraph 2 n°. 2 and 3 as well as paragraph 5 German Trademark Act, cannot be entirely rejected with the Higher Regional Court’s reasons. The Federal Court of Justice did not accept the Higher Regional Court’s assumption that because of the rejection of the request for registering the red coloring as community trademark a usage of the red color by defendant 2 would not occur in Germany. The Federal Court of Justice thought claims of the plaintiff were possible, as far as defendant 2 used its red and white logo at the Formula 1 event „Großer Preis Santander von Deutschland 2010“ and in their internet presence. Defendant 2 did not use the color red isolated in its logo but used it in a combined sign of several elements. The Higher Regional Court, however, did not check if the plaintiff’s abstract color trademark is a well-known trademark in Germany which can be confused with defendant 2’s logo on its website. If the red coloring is a well-known trademark, the plaintiff, even if there is no likelihood of confusion, can take action against the usage of the red color by defendant 2 on hoardings around the perimeter of the racing route and on its website if the target group associates defendant 2’s logo mentally with the plaintiff’s color trademark and is affected by the usage of the red coloring as defendant 2’s main color. The Higher Regional Court has to make up the required findings.
Federal Court of Justice press office note n°. 160/2015; Federal Court of Justice verdict September 23, 2015 – I ZR 78/14; Higher Regional Court of Hamburg – verdict of March 6, 2014 – 5 U 82/11; Regional Court of Hamburg – verdict of February 24, 2011 – 315 O 263/10