With its decision rendered on June 18, 2014 (Joined Cases C-217/13 and C-218/13), the EU Court of Justice had the opportunity to clarify a set of crucial issues regarding the distinctive character of colour marks, in particular pertaining to: (i) the relevancy and scope of the possible referral to consumer surveys in the assessment of the mark’s distinctiveness acquired through use; (ii) the time when distinctive character must be proved to be existing in order to avoid a declaration of invalidity of the mark; (iii) the party who has to bear the burden of proof with respect to the ascertainment of a distinctive character acquired through use.

The questions remitted to the EU Court came from two pending German cases where a validity challenge was raised vis-à-vis a trademark consisting of a contourless red colour of a certain tone, registered for banking services by an established German bank.

With regard to consumer surveys, the Court clarified that, even for the so-called “abstract” colour marks, the referral to an opinion survey among the relevant consumer public is only one of the means recognized for assessing the distinctive character acquired by a mark through its use in commerce by the trademark holder, and not necessarily the decisive factor. In fact, national courts should decide on a case-by-case basis and look at further different factors such as, inter alia, the market share held by the mark in question in the relevant public, the degree of intensiveness, of geographical extension and the duration of use of the mark, or the amount invested by the owner in promoting the mark.   Accordingly, the Court held that it is not possible to state in general terms, for example by referring to predetermined percentages relating to the degree of recognition of the mark within the relevant section of the public, when a mark has acquired a distinctive character through use. With such respect, the Court rejected the principle upheld by the German case-law according to which the distinctive character of a trademark should be automatically denied every time the results of consumer survey affirm a degree of recognition lower than at least the 70% of the relevant public.

The Court furthermore ruled that the exact time against which the distinctive character acquired through use must be assessed is the time when the application for registration of the trademark was filed, at least for all the Member Countries (such as Germany) which chose not to transpose into national law the power laid down in the second sentence of Article 3(3) of Directive 2008/95 (id est not to provide for a system recognizing the same relevance to use occurred after the filing of the application).

Finally, the Court held that the burden of proof regarding the distinctive character acquired through use shall be borne by the trademark registrant.