“Spar­kas­sen-Rot” remains as color trade­mark


The Fede­ral Court of Jus­ti­ce ruled on 21.07.16 that “Spar­kas­sen-Rot” will not be can­cel­led as a color trade­mark(Ref.: I ZB 52/15).

The owner of the brand is the Spar­kas­sen-Finanz­grup­pe. She had appli­ed for the abs­tract color mark in 2002, and it was regis­tered in 2007. The com­plaint was filed by the Spa­nish San­tan­der ban­king group, which also uses the color red. It had appli­ed to the Ger­man Patent and Trade­mark Office for can­cel­la­ti­on of the color mark, but this was rejec­ted. The pro­cee­dings then pro­cee­ded via the Fede­ral Patent Court and a preli­mi­na­ry ruling by the Euro­pean Court of Jus­ti­ce to the Fede­ral Court of Jus­ti­ce.

Reasons for the judgment

The Fede­ral Court of Jus­ti­ce poin­ted out that abs­tract color marks gene­ral­ly do not con­sti­tu­te pro­duct iden­ti­fiers and thus can­not be regis­tered as a trade­mark due to lack of distinc­ti­ve­ness pur­su­ant to Sec­tion 8 (2) No. 1 of the Ger­man Trade­mark Act. Howe­ver, the color red has beco­me estab­lished in the rele­vant cir­cles of the public and thus, by way of excep­ti­on, does con­sti­tu­te a distinc­ti­ve sign in accordance with the Ger­man law on distinc­ti­ve signs. § Sec­tion 8(3) of the Trade­mark Act. To this end, both par­ties had sub­mit­ted opi­ni­on rese­arch reports during the pro­cee­dings in order to sub­stan­tia­te the issue of traf­fic pene­tra­ti­on. Accor­ding to the court, this enforce­ment could not be pro­ven for the year in which the trade­mark appli­ca­ti­on was filed. Howe­ver, at the time of the decis­i­on on the 2015 can­cel­la­ti­on request, the assump­ti­on of enforce­ment was jus­ti­fied. Thus, a can­cel­la­ti­on pur­su­ant to Sec. 50 (2), first sen­tence, Trade­mark Act was not pos­si­ble.

If you have any ques­ti­ons regar­ding trade­mark law, plea­se feel free to cont­act us by pho­ne at 0221–4201074, by e‑mail at info@rehkatsch.de or make an appoint­ment with our office.

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