In line with some very recent decisions of German courts, the German Federal Supreme Court upheld the trademark for the color “blue” for the company Beiersdorf represented as shown below and described as “blau Pantone 280 C” (FSC, decision dated July 9, 2015, I ZB 65/13–Nivea-Blau).
German case law on color trademarks as well as 3D marks used to be very strict. Such trademarks usually face strong resistance during registration procedures and later during enforcement. Generally, protection for color trademarks is refused with the reasoning that the relevant consumer would understand the color to be merely an aesthetic feature of the product. Consumers would not understand the color to be an indication of origin. As a consequence, color trademarks are typically only registered where the applicant can come up with a survey that demonstrates that the mark is recognized to be an indication of origin by an adequate portion of the relevant consumers so that the mark has acquired sufficient distinc-tiveness (secondary meaning).
In the case at hand, the company Beiersdorf sought trademark protection for the color blue for “cosmetics.” The mark was registered because Beiersdorf had submitted a survey demonstrating acquired distinctiveness. A competitor then requested cancellation of this color trademark on absolute grounds. The German Patent Court granted the request for cancellation arguing that the trademark was not sufficiently distinctive. Acquired distinctiveness could only be assumed where the respective survey showed that the color in question was recognized as indication of origin by at least 75 percent of the relevant consumers.
The German Federal Supreme Court reversed the decision of the German Patent Court and found that sufficient distinctiveness may also be acquired where the respective survey shows that the mark is considered to be an indication of origin by at least 50 percent of the relevant consumers. The case has been transferred back to the German Patent Court because the survey presented contained misleading questions and will have to be redone.
The survival of Beiersdorf’s trademark for the color “blue” is therefore not guaranteed. Its destiny will depend on the results of the new survey. However, the decision of the German Federal Supreme Court has lowered the hurdles considerably for registration of color trademarks. While companies used to be reluctant to file color or 3D trademarks in Germany due to foreseeable difficulties in registration and enforcement procedures, they may now feel encouraged to apply for protection of colors.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association