German Federal Patent Court Refers Question Regarding a Color Mark to the European Court of Justice

In two proceedings 33 W (PAT) 103/9 and 33 W (PAT) 33/12 (decision) the validity of the color mark “Red”, which has been registered as a color since 2007 on behalf of German Savings Bank and Giro Association and which has been used starting from the last century, namely during the 1960s and 1970s, is at issue. Two banks, which are competitors, have failed with the attempt to cancel this trademark at the German Patent and Trademark Office. Now the German Federal Patent Court has asked the European Court of Justice for a decision as to how large the share of the consumers must be, who associate the color with a certain company and how the interests of competitors in a free use of said color has to be taken into consideration. Furthermore, it shall be clarified, which point in time is relevant for this assessment, the date of the application of the trademark (in this case, 2002) or its registration (in this case, 2007). Finally, it shall be clarified as to who has the burden of proof and to the disadvantage of which party the case has to be decided if the view of the consumer at the relevant point in time cannot be determined anymore.