On March 8, 2013, the Federal Patent Court ruled in two proceedings concerning the “Red” color trademark of the German Savings Banks and Giro Association to refer a series of fundamental questions to the European Court of Justice for a preliminary ruling.
The color red (HKS 13) has been registered as a trademark for the savings banks since 2007. According to their own statements, the savings banks have been using this shade as a uniform corporate color since the sixties and seventies of the last century, including for their savings passbooks. Based on the registered trademark, the Savings Banks Association has initiated proceedings against several other banks that also used the color red. For instance, a trademark infringement case is currently pending before the Higher Regional Court of Hamburg.
Two competing banks, Santander and Oberbank, have, for their part, applied to the German Patent and Trademark Office to cancel the savings banks' color trademark. Both banks also claim to have used the color red as their corporate color for a considerable time. However, unlike the savings banks, they have not been present in the German market for long. They invoke their freedom of establishment and an undue restriction of access to the German market. The savings banks, conversely, refer to the protection of legitimate expectations afforded to them by the trademark registration. The German Patent and Trademark Office rejected the cancellation. Due to appeals against these decisions, the proceedings are now pending before the Federal Patent Court.
According to the Federal Patent Court's findings, the decision on the cancellation applications hinges on fundamental questions that the European Court of Justice must rule on in advance, given that trademark law is harmonized across Europe by a directive. Therefore, the court is submitting several questions to the ECJ.
The core issue is whether a sufficiently large majority of consumers perceive the color red as a distinctive sign of the savings banks even when it is used alone, i.e., without supplementary signs or references to the savings banks, in advertising for financial services. The European Court of Justice is to determine what proportion of consumers must understand the color as a sign of a specific company, and to what extent the interest of other banks in the free use of the color must be considered. Furthermore, the Court is asked whether the assessment should be based on the date of trademark application (here: 2002) or the date of trademark registration (here: 2007). Additionally, it is questioned who bears the burden if the consumers' perception at the time can no longer be ascertained.
(Proceedings 33 W (pat) 103/09 and 33 W (pat) 33/12 of the Federal Patent Court)
Source: Press release of the Federal Patent Court
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Attorney for Information Technology Law
Email: info@goldberg.de
