Two recent judicial decisions in Germany have the potential to limit the scope of protection conferred by color trademark registrations. Since color marks lack inherent distinctiveness and are, therefore, not per se registerable, the issue, in both proceedings, turned on whether the applicant had submitted actual evidence of acquired distinctiveness.

Back in 2013, the Federal Patent Court referred to the CJEU for a preliminary ruling several questions on the interpretation of Art. 3 of the Trademarks Directive (2008/95/EC). One of the questions was whether a 70 percent brand recognition was necessary to acquire distinctive character through use. In its response to this question, the CJEU (C-217/13 and C‑218/13) held, inter alia, that it was not possible to merely refer to predetermined percentages to support the conclusion that a distinctive character has been acquired through use. While a consumer survey may be one of the factors considered, it was not the only decisive criterion.

Following the CJEU’s decision, the Federal Patent Court (25 W (pat) 13/14) ruled on 8 July 2015 that a certain shade of red is to be deleted from the trademark register. It did so mainly because the Court deemed survey evidence presented by the proprietor of the mark to be of insufficient quality – even though a 67,9 percent figure was not a ground for exclusion per se. In the Court’s opinion, the conductors of the survey used so-called “leading questions” which may have suggested the desired answer. An appeal against this decision is pending before the Federal Court of Justice and is expected to further clarify to what extent surveys conducted by the parties themselves (or party-hired expert witnesses) may be suitable means to demonstrate the necessary degree of association.

In a second case, the question once again turned on the issue of whether survey evidence presented by a party was of sufficient quality to prove a color mark’s acquisition of distinctive character through use. While, on 9 July 2015, the Federal Court of Justice (Press Release No. 112/2015) stated that, in principle, a particular type of blue could have acquired distinctiveness through use if 50 percent of the relevant public associated it with the goods and services for which it has been registered, a party-submitted survey, showing a degree of association of 58 percent, was considered insufficient proof and methodologically flawed. According to the Court, since the packaging of the goods concerned is typically a combination of white and blue, all test persons should have been presented with a sample showing only the blue color instead of a blue card framed in white.

Lessons Learned

While the importance of colors in corporate branding remains undisputed, these decisions illustrate the problems that go along with registering (and enforcing) color trademarks. Even though the Federal Court of Justice stated that 50 percent, in principle, may be sufficient to demonstrate the necessary degree of association among the relevant public, the qualitative requirements that need to be placed on survey evidence (e.g. design, methodology) have not yet been established with sufficient clarity. The German rules of civil procedure are somewhat silent on that matter.

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