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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.
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