The proceedings to cancel the color mark RED registered by the association of the Sparkassen-Finanzgruppe for financial services are over! The Federal Court of Justice has rejected the cancellation of the color mark in the final instance.
The brand owner of the German color mark RED is the umbrella organization of the Sparkassen finance group. For them, the mark was registered in 2002 as a distinctive sign for the services "financial affairs, namely retail banking (banking services for private customers)".
The Spanish Santander Banking Group, which also uses the color red for its banking services, filed an application for cancellation with the German Patent and Trademark Office (DPMA) against the color mark, as it did not want to be prohibited by Sparkasse from using the color red for its own customary market presence.
The DPMA rejected this cancellation request, whereupon the Santander banking group filed a complaint with the Federal Patent Court. The Federal Patent Court ordered the cancellation of Sparkassen ROT in the cancellation proceedings conducted against the registration of the color mark, as there was no established use in commerce at the time of application. Furthermore, sufficient established use in commerce had not been proven at the time of the cancellation request.
Decision of the court
The I Civil Senate of the Federal Court of Justice, responsible for trademark law, decided on July 21, 2016, under file number I ZB 52/15 (Press release) – ruled that the color mark RED is not to be deleted from the German trademark register, thereby overturning the decision of the Federal Patent Court.
The Federal Court of Justice explained that abstract color marks are generally not distinctive and therefore not registrable, as the relevant public regularly perceives a color only as a decorative element and not as a product identifier. However, this is to be judged differently if the color mark has achieved acquired distinctiveness.
Sufficient for a color mark to have established itself in the minds of the public, as with other types of marks, is that the vast majority of the public recognizes the color as an indicator for the goods or services for which the mark is claimed. The parties presented a multitude of market research reports in the proceedings regarding the issue of public recognition, which justified the assumption that the color mark RED for financial services had achieved public recognition at the time of the decision on the cancellation request in 2015. In such a case, the color mark may not be canceled.
Conclusion
The vast majority of traffic recognizes, due to the color, that it must be a savings bank when they see the bank's red market presence. Therefore, the Santander banking group's application to cancel the registration of the color mark RED in the German trademark register was unsuccessful.
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