Santander shown a red card in colour trade mark dispute in Germany

Sparkassen Group and Banco Santander have been involved in an ongoing dispute over the use of the colour red in connection with banking services in Germany.

Sparkassen applied to register a trade mark in respect of a specific colour of red, known as "HKS 23", in 2002 in connection with financial services in NICE class 36.   Following an initial objection, they filed evidence of 'acquired distinctiveness' which had been achieved by using the colour since the 1960s and spending over 130 million Euros promoting and developing the brand.  The mark was eventually registered in 2007.

Since registering the mark, Sparkassen have regularly taken action against others use of the colour red in connection with financial services.

Challenger Banks

In October 2009 Oberbank AG, an Austrian retail bank, and Banco Santander, a Spanish retail bank, both applied to invalidate Sparkassen's trade mark. Both banks have used the colour red in connection with their banking services over many years.  However, both only recently entered the German market.

German Patent Court Decision

The German Patent Court ordered the cancellation of Sparkassen's mark and held that acquired distinctiveness had not been proven at the time of filing in 2002 or at the time of the invalidity decision in 2015.

German Federal Court Appeal Decision

An appeal was filed at the German Federal Court who referred several questions to the CJEU for a preliminary hearing.  The questions asked were to determine the necessary degree of consumer recognition when considering acquired distinctive character and the relevant time period where the proprietor of a mark must prove acquired distinctiveness.

The Court issued a decision last Thursday which overturned the decision of the German Patent Court and upheld registration of Sparkassen's mark.  The Federal Court held that the colour red had become widely associated with Sparkassen's savings and banking services in Germany.

It held that a survey is required as part of the evidence which must produce findings showing that at least 70 % of customer recognition.  The Court also confirmed that under German law, proof of acquired distinctiveness shown either at the time of filing, or at the time of the decision can prove the validity of the mark.

The Court held that the surveys submitted by the applicant failed to prove acquired distinctiveness at the time of filing in 2002, but supported a finding of acquired distinctiveness in 2015, at the time of the judgment.

It is not yet clear how the decision will affect Santander's use of the mark in Germany as they could now be infringing Sparkassen's mark and may be forced to change their brand.