Federal Supreme Court considers it possible that colour trade mark “Nivea blue” has acquired distinctiveness

20 Juli 2015

On 9 July 2015, the 1st Civil Senate of the German Federal Supreme Court (Bundesgerichtshofs, BGH) decided that the abstract colour trade mark no. 305 71 072 "Blue" (Pantone 280 C – so-called "Nivea blue") lacks distinctiveness and is therefore incapable of being registered as a trade mark according to Sect. 8 para. 2 no. 1 German Trade Mark Act (Markengesetz, MarkenG) because the addressed public normally only perceive a colour as a decorative element and not as a product sign (docket no. I ZB 65/13 – Nivea Blau).

The colour trade mark was originally registered due to acquired distinctiveness for "cosmetics, namely skin and personal care products" (Nice class 3). However, on 19 March 2013, the German Federal Patent Court (Bundespatentgericht, BPatG) had confirmed the decision of the German Patent and Trade Mark Office (Deutsches Patent- und MarkenamtDPMA) of 22 February 2010 to cancel the trade mark for lack of distinctiveness (docket no. 24 W (pat) 75/10).

Unlike the Federal Patent Court, however, the Federal Supreme Court based on the facts established by the Federal Patent Court considered it possible that the colour trade mark pursuant to Sect. 8 para. 3 German Trade Mark Act cannot be cancelled because the trade mark, as a result of its use for the respective goods, has acquired distinctiveness among the trade circles concerned. The Federal Supreme Court, though, took the view that the requirements for an acquired distinctiveness set by the Federal Patent Cour, according to which in the relevant area of goods at least 75 per cent of the addressed public must perceive the colour as an indication to a certain company, were excessive. According to the Federal Supreme Court, it suffices that more than 50 per cent of the public perceive the colour as a product sign. Therefore, the Federal Supreme Court has referred the case back to the Federal Patent Court, where it will be dealt with again.

The entire judgment can be downloaded here (in German language).