After almost six years of litigation, the savings banks have prevailed against the Santander banking group at the Federal Court of Justice. The latter has applied to the German Patent and Trademark Office for cancellation of the color mark. However, the German Patent and Trademark Office rejected the cancellation requests.

On their appeal, the Federal Patent Court stayed the proceedings and made a reference for a preliminary ruling to the Court of Justice of the European Union, which ruled on the matter in its judgment of June 19, 2014. Subsequently, the Federal Patent Court ordered the cancellation of the color mark.

On appeal by the trademark owner, however, the Federal Court of Justice has now set aside the order of the Federal Patent Court and dismissed the appeal against the decision of the German Patent and Trademark Office.

The German Federal Supreme Court has ruled that the absolute ground for refusal of lack of distinctiveness under Sec. 8 para. 2 No. 1 MarkenG exists. Abstract color marks are generally not distinctive and are therefore protected under Sec. 8 para. 2 No. 1 MarkenG (German Trademark Act), because the relevant public regularly perceives a color as a decorative element and not as a product identifier. There were no special circumstances justifying a different assessment.

The Federal Patent Court had assumed that the color mark had not been in use for the services in question either at the time of the application in 2002 or at the time of the decision on the cancellation request in 2015 within the meaning of Section 8 (1). 3 MarkenG** enforced. The Federal Court of Justice did not endorse this view. As is the case with other types of trademarks, it is sufficient for abstract color trademarks to be distinctive to the public that the majority of the public sees the color as an identifier for the goods or services for which the trademark is claimed. In the proceedings, the trademark owner and the applicants submitted a large number of opinion research reports on the issue of trade acceptance. Although these expert opinions do not prove that the color mark had become established in the market at the time of the trademark application in 2002, they do justify the assumption that it had become established in the market at the time of the decision on the cancellation request in 2015. In such a case, the color mark may be registered pursuant to Sec. 50 para. 2 sentence 1 MarkenG cannot be cancelled.