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The Federal Supreme Court has recently overturned the decision of the Federal Patent Court which had cancelled the abstract colour trade mark “Red” (above). The colour trade mark of the umbrella organisation of the Sparkassen-Finanzgruppe thus is still registered for services in the “financial industry, namely retail banking (banking services for private customers)”.

The Spanish Santander bank group had requested the cancellation of the colour trade mark in front of the German Patent and Trademark Office (GPTO) on the grounds the mark was invalid. The GPTO had rejected the request for cancellation. The Federal Patent Court requested a preliminary ruling from the General Court of the European Union and it subsequently cancelled the colour trade mark. The appeal of the trade mark owner to the Federal Supreme Court led to the annulment of that decision.

Although the Federal Supreme Court found that the abstract colour trade mark “Red” does not have an original distinctive character for the designated services in the financial sector, it also decided the trade mark had acquired a secondary meaning (“Verkehrsdurchsetzung”) at the time of the decision on the request for cancellation. The Federal Patent Court had assumed that the trade mark owner used the colour “Red” as a trade mark. The question of whether a trade mark has acquired secondary meaning as a result of its use must be assessed on the basis of various factors. The market share, the intensity of use, the advertising costs, the geographical distribution and the duration of the use must be considered. The Federal Patent Court did not take these factors into account and the criteria it applied to establish if a mark had a secondary meaning were too strict. In fact, the large amount of evidence submitted by the trade mark owner showed that the secondary meaning of the colour trade mark existed at least at the time of the decision on the request for cancellation. In its decision, the Federal Supreme Court presents a very detailed discussion about all of the evidence submitted.

The judgment of the Federal Supreme Court should be read by all those who want to argue a trade mark has acquired a secondary meaning.

File no. I ZB 52/15