A shade of the colour red used by a German bank shall continue to enjoy trademark protection. That was the verdict of the Bundesgerichtshof (BGH), Germany’s Federal Court of Justice, in its ruling of July 21, 2016 (Az. I ZB 52/15).
GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London conclude: A German and a Spanish bank had been arguing for years over the use of a shade of red known as HKS 13, with the dispute having gone before the Bundespatentgericht (Federal Patent Court) and the European Court of Justice. The background to this is that the German bank had already registered this particular shade of red as a colour mark several years ago. It was registered as a commercially established symbol for services in the field of “Finanzwesen” (finance), i.e. retail banking. Due to the fact that the Spanish bank offers similar services in Germany and also uses a very similar shade of red, it formally requested that the colour mark be cancelled. The 1st Civil Panel of the Bundesgerichtshof, competent, among other things, for hearing cases relating to trademark law, has since ruled that the registered colour mark will not be cancelled.
However, things had looked rather different prior to this decision. The Spanish bank had been successful before the Bundespatentamt in applying for cancellation of the colour mark due to its similarity to the shade of colour used by said bank. The BGH has since reached a different conclusion that is by no means obvious. As the judges at the Karlsruhe court explained, abstract colour marks are not normally sufficiently distinct and therefore are not capable of being registered. The Court held that colours are generally perceived by consumers as a decorative element and not one that is characteristic of a given product. It went on to say, however, that exceptions can arise when a colour establishes itself commercially and consumers view it as a distinguishing feature. After consulting various expert opinions, the Court concluded that this had been the case here since at least 2015, which is to say that consumers associate the shade of colour in question with the German bank. For this reason, the colour mark was not to be cancelled.
Colour marks can prove to be of particular importance to businesses, as colours are apt to stick in the minds of consumers and ensure that the end result is easily recognizable. This means that it is all the more important for businesses to obtain adequate protection for them as registered trademarks. Lawyers who are versed in the field of trademark law can offer advice and assistance in enforcing as well as fending off claims in the event of trademark violations.
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