The European Court of Justice (ECJ) has given a preliminary ruling on three questions referred to it by the German Federal Patent Court relating to acquired distinctiveness.
Article 3(1) of the Trade Marks Directive (2008/95/EC) (the Directive) (Article 3(1)) provides that a trade mark will not be registered if it fulfils one of a list of criteria. One of these criteria is that the mark is devoid of distinctive character (Article 3(1)(b)).
However, under Article 3(3) of the Directive (Article 3(3)), a trade mark will not be refused registration or be declared invalid in accordance with Article 3(1)(b) if, before the date of application for registration and following the use that has been made of it, it has acquired a distinctive character. EU member states may provide that this provision also applies where the distinctive character was acquired after the date of application for registration or after the date of registration.
In 2002, a German banking group, D, applied to register a shade of red as a German trade mark. In 2008, another bank, O, applied for a declaration that the colour mark was invalid, saying that it had not acquired the necessary level of distinctiveness.
In October 2009, two companies from the S banking group each applied for a declaration of invalidity on grounds similar to those relied on by O. The German Trade Mark Office joined the two sets of proceedings and dismissed them on grounds similar to those relied on in O’s action, in particular on the basis that a degree of association of 67.9% was sufficient to form the basis of an assumption that the mark has acquired distinctive character.
O and S appealed to the German Federal Patent Court, which stayed both sets of proceedings and asked the ECJ to give a preliminary ruling on the following questions:
Do Articles 3(1) and 3(3) preclude an interpretation of national law according to which, for an abstract colour mark that is claimed for services in the financial affairs sector, a consumer survey must indicate an adjusted degree of association of at least 70% in order to form a basis for the assumption that the trade mark has acquired a distinctive character following the use that has been made of it?
Is Article 3(3) to be interpreted so that the time that the application for the trade mark was filed, and not the time that it was registered, is relevant where the trade mark owner claims, in its defence against an application for a declaration invalidating the trade mark, that the trade mark acquired a distinctive character, following the use made of it, in any event more than three years after the application, but before registration?
If, under the above conditions, the time that the application was filed is also relevant, is the trade mark to be declared invalid if it is not clarified, and can no longer be clarified, whether it had acquired a distinctive character, following the use made of it, at the time that the application was filed?
The ECJ held that:
Article 3 precludes any interpretation of national law under which, in the context of proceedings as to whether a contourless colour mark has acquired a distinctive character through use, it is necessary in every case that a consumer survey indicate a degree of association of at least 70%.
As long as the relevant member state has not exercised its power under Article 3(3) to take into account distinctiveness acquired after the filing date, Article 3(3) makes it necessary to examine whether an inherently non-distinctive trade mark had acquired distinctive character before the filing date. In this context, distinctiveness alleged to have been acquired during the period between filing and registration is not relevant.
Unless the relevant member state has exercised its power under Article 3(3), Article 3(3) does not preclude a mark from being declared invalid if it is intrinsically devoid of distinctive character and the owner of that mark has failed to show that it has acquired a distinctive character following the use that has been made of it before the filing date.
The UK has exercised the option under Article 3(3) to provide for the possibility that distinctiveness can be acquired after registration so the ECJ’s answer to the second question is of limited application within the UK.
The answer to the first question reiterates the principle that, when assessing acquired distinctiveness, there can be no hard and fast rule, and all relevant circumstances must be taken into account. In particular, the assessment cannot be dependent on a specific degree of association as demonstrated by a survey. The ECJ expressly stated that the assessment of distinctiveness through use is the same for colour as for any other marks; there is no stricter test for colour marks.
Case: Oberbank Ag, Banco Santander SA and Santander Consumer Bank AG v Deutscher Sparkassen- und Giroverband eV, joined cases C-217/13 and C-218/13.
First published in the August 2014 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.