What is required to prove acquired distinctiveness?

06 December 2016

Sebastian Fischoeder

In a landmark decision the German Bundesgerichtshof has provided guidance on the "dos" and "don'ts" of using surveys to demonstrate the acquired distinctiveness of trade marks. Owners of marks relying on acquired distinctiveness are advised to keep regular records of survey results and document evidence of the use and market perception of the mark in question in order to defend against cancellation attacks.

Background

The applicants in the case applied to cancel the colour per se mark “Sparkasse-Red” due to lack of distinctiveness. The court confirmed that, whilst the starting position was that contourless colour marks lacked distinctiveness, such marks could acquire distinctiveness if more than 50% of the relevant public identified the mark as denoting the source of the goods or services in respect of which the mark is registered. The court ultimately found that the “Sparkasse-Red” mark had acquired such distinctiveness.

Acquired distinctiveness and survey evidence

A feature of the proceedings was the high number of surveys submitted by the parties as evidence for (and against) acquired distinctiveness. The court endorsed surveys as being its preferred evidence of acquired distinctiveness, at least for colour per se or product shape marks. The court nonetheless emphasised the importance of market and use-related evidence in assessing the acquired distinctiveness. In conducting its assessment the court applied the so called “Chiemsee” criteria1, taking into account the duration, territory, extent, market share and advertising volume of the mark in question.

In reaching its decision the court provided useful guidance on the appropriate methodology and wording of surveys on acquired distinctiveness in Germany.

The court confirmed that a three-stage test should be used. The first stage concerns awareness, the correct question being whether the respondent has seen the sign in connection with the product/service before or not. The second stage concerns recognition of the sign as a trade mark, the correct question being whether, in connection with the product/service, the sign indicates to the respondent a specific undertaking or several undertakings (or no undertaking at all). The third stage is about identifying of the name of the brand owner. Acquired distinctiveness is then assessed by looking at the number of respondents who recognised the sign as a trade mark and deducting those who gave the wrong name at stage three. The Court also gave guidance on the correct formulation of the first stage question, and how to deal with respondents who answer "several undertakings" at stage two.

Trade mark applicants, trade mark holders and cancellation applicants now have a far better understanding of what will be accepted as a reliable survey in Germany, which will bring a higher degree of legal certainty.

Support for 3D product shape marks and other non-traditional marks

Colour and product shape marks share a common characteristic: consumers do not perceive them in isolation but regularly in conjunction with other elements or marks. It is encouraging that the Bundesgerichtshof criticised, even in relation to a colour, the imposing of overly strict requirements on what will constitute acquired distinctiveness. 

This position contrasts with the English High Court judgment in the "KitKat" 'four-finger' shape trade mark case (currently under appeal).

In the "KitKat" case the Court was prepared to accept that consumers associated the shape of the goods with the "KitKat" brand (and thus with Nestlé), but did not accept that consumers went so far as to rely on the shape to identify the origin of the goods. Holders of non-traditionaltrade marks will likely welcome the support provided in the Sparkasse case.


1 Windsurfing Chiemsee Pruktions-und Vertriebs GmbH (WSC) v Boots-und Segelzubehör Walter Huber (C-108/97)

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