Case C-217/13, Oberbank – seeing trade marked red in financial affairs

Red is in the trade marks of Coca-Cola, McDonalds, and Marlboro. In 2007, a German bank registered a particular type of red as its trade mark. This registration was challenged by two other banks new to the German financial services market. Austria’s Oberbank and Spain’s Bank Santander both use the colour red in their corporate identity. So can the German bank keep its mark by claiming that through ‘use’ its red has acquired distinctiveness? And if so, how can it prove this?

Facts
In 2007, the German patent and trade mark office registered an abstract colour mark for a type of red known as ‘HKS 13’. The mark was registered for Class 36 (financial services). The right holder was the German bank ‘Deutscher Sparkassen- und Giroverband e.V’.

In 2008, the Austrian bank ‘Oberbank AG’ challenged the mark’s registration and it asked the German patent and trade mark office to annul the registration. In support of its request, it raised three main arguments. First, it was simply illogical to allow an abstract contourless mark to serve as an indication of origin – services were intangible and they were not linked to any particular colour.

Second, in the financial services sector red had no intrinsically distinctive characteristic. Red was used by a number of companies. Further, and as a matter of principle, colours ought to belong to the public domain. Red was the advertiser’s colour of choice. In any event, the strict legal conditions governing whether a colour was capable of indicating origin were not satisfied in this instance – there was neither a ‘very specific market’, nor were there just a few competitors recognisable by ‘their colour’.

Third, and most importantly, the Austrian bank anticipated the German bank’s ‘defence’ of ‘red might not itself be distinctive but this one had acquired a distinctive character through use’. No, said the Austrian bank, there was a real need to keep the colour red free for use. And in any event, the Austrian bank remarked, the German bank’s studies had failed to show a sufficient link between the colour and the German company. For whereas the German bank’s studies had shown there was a 68% ‘degree of association’, the Austrian bank submitted that there were errors in the study. Moreover, given the importance of what was at stake the Austrian bank submitted that the law should really require almost a 100% ‘degree of association’.

The Austrian bank’s submissions were refuted by the German bank. In the latter’s view, abstract colour marks were recognised in case law. Red HKS 13 possessed the necessary distinctive character in the retail banking sector. Competitors in this sector of the market were identifiable by colour – for example, there was a ‘Dresdner bank’ green, and a ‘Deutschen bank’ blue. Through use by the Deutscher Sparkassen- und Giroverband, this particular shade of red had acquired a distinctive character.

The German bank added that its consumer surveys were fair and established that a distinctive character had been acquired by use of this red. The German bank had used Red HKS 13 as part of its corporate house style from the 1960s and 1970s – for example, the colour was used on its customers’ savings books. The colour had been depicted in the bank’s advertising as far back as 1940. And the German bank had spent a considerable sum of money on the use of this red in its advertising. Indeed, it had spent a far greater proportion of its money on advertising when compared to its competitors.

On hearing the submissions of the Austrian and German banks, the German patent and trade mark office decided in April 2012 that the German bank’s mark lacked distinctiveness. However, it accepted the reports and documents supplied by the German bank. It also took no objection to the way in which the questions had been asked. And it held that the percentage rates relating to the degree of association should be regarded as sufficient.

The decision was appealed up to the German Federal Patent Court. The Austrian bank again repeated its submission that a degree of association far in excess of 50% ought to be required. Red was an effective colour for advertising purposes.

At the German Federal Patent Court
To determine whether the particular colour of red had acquired a distinctive character through use, the German court repeated the guidance of the ECJ expressed in Case C-108/97, Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC). The factors which a court had to take into account included not only the market share of the mark but also the intensity, geographic distribution and how long-standing the use of the mark has been, and the scale of expenditure devoted to advertising this mark. Market research could also be taken into account.

German case law and commentary on consumer surveys made the point that whether a mark has acquired a distinctive character through use depended on how many interviewees recognised the sign as an indication of origin (see for example, Pflüger, GRUR [2004] at 652). For those interviewees who did recognise the sign, the key question was then what is the name of the company referred to by the sign? According to the majority of writers, the answer to that question provided the requisite ‘degree of association’ to apply Article 8(3) of the German Law on Trade Marks [Markengesetz].

Applying those factors here, it did not seem particularly likely to the German Federal Patent Court that an abstract colour mark could be understood as an indication of origin for financial services. These services were not as a rule linked with particular objects recognisable by consumers. Financial services by their nature were complex and offered with the necessary supplementary oral and written information. A consumer was not going to decide to invest in a product or take out a loan without sufficient information – and their decision would not depend on colour alone. Therefore, it was highly likely that the consumer in this area would be particularly concerned by the written information rather than understand an abstract colour as an indication of origin. The colour may be understood to be an element of design, which can be used by any supplier.

Equally, the amount of money spent on advertising using the HKS 13 colour red was irrelevant. The investment does not relate to the use of the colour red in isolation but was almost always used in combination with the word ‘Sparkasse’, or ‘Sparkassen S’ – that is to say, together with another sign that refers to those banks. The amount invested provided no answer to the question of whether the savings banks concerned had been successful in establishing the degree of association between the colour alone and their services.

Nevertheless, the results of the consumer study were of decisive importance given that those studies only concerned the colour HKS 13 and not the combination of the colour with another sign. In so far as the consumer surveys themselves were concerned, the various studies generated divergent results. The differences arose because of the questions asked. The CJEU in its ‘chocolate mouse’ judgment of Case C-96/11, August Storck KG v OHIM had indicated that the mark had to make an immediate and certain identification of origin with the claimants’ products or services. To the Federal German Patent Court, consumer surveys did not seem to be the appropriate way of ascertaining this – not too many questions could be asked in an interview, and interviews could not take too long. Rather what was required was an analysis of those surveys which have already been conducted. In this instance, although the surveys contained useful information when they were taken as a whole, the surveys needed to be understood as meaning that even if more than 60% of consumers recognised the colour as an indication of a specific company, then doubts still remained as to whether there was the requisite immediate and certain indication rather than just a vague indication.

Such doubts were not be removed even where the majority of consumers recognised the colour as an indication of the origin of the specific services of a particular company, or rather they recognised the colour was only an indication of a company and thereby necessarily a package of services offered by that company. In the latter situation, although the colour of the mark may well constitute a company sign, the colour itself was most probably not a mark because the function of a mark is to indicate the origin of specific, separate services. A fresh survey would be unlikely to remove these doubts. Accordingly, a degree of association in excess of 60% was probably insufficient to alleviate these concerns and a much higher degree of association was most likely required.

In conclusion, extremely convincing evidence was required to overcome these doubts and arrive at a finding that the contested contourless abstract colour mark had achieved a degree of association for consumers sufficient to indicate the origin of the financial services. A degree of association of 50% was insufficient – it should be at least two-thirds, namely at least 70%.

The German Federal Patent Court then turned to the issue of evidence. This matter, it believed, was not just a matter of national law. Admittedly, the CJEU had held that whether a sign had a distinctive character could be determined by consumer research conducted under the rules of national law. Yet, in this case, the question was not confined to just the nature and way in which consumer research should be conducted and evaluated. The only guaranteed way of ensuring a uniform standard for annulling marks was if it fell within the scope of the Directive. And on that point, there was no case law from the CJEU as to the requisite degree of association for allowing an abstract colour to be said to have acquired a distinctive character. Equally, there was no case law from the CJEU surrounding how high these percentages ought to be and which arguments were decisive.

The German Federal Patent Court also wondered about nullity depending on whether the sign had acquired distinctive character through use at the time of application. Thus, if the relevant time was taken to be the date of registration (July 2007), then the degree of association had not achieved the rate of 70%. However, if the relevant time was taken to be the application filing date (February 2002), then in this case there was a problem – there was a gap of almost three and a half years from the moment when the mark was applied for and the moment when the consumer studies were conducted. In that period, considerable changes could also have occurred particularly since the banking sector had been liberalised. There were also new entrants to the German market which used a similar colour red. Consumer perceptions could have changed. As such, it could not be concluded that at the time when application was made that the mark had not acquired the necessary degree of association.

In that context, the German Federal Patent Court noted that the EU CTM regulation set down a procedure for annulling a trade mark. However, according to the case law of the ECJ the time of the decision to register does not determine the matter but rather attention is directed to when the application was filed and whether there were grounds to refuse the mark. That approach might be applied by analogy to the EU’s trade mark directive.

The final issue raised in this reference of the German Federal Patent Court concerned the burden of proof. Again, the German court believed that the CJEU enjoyed competence in this area for what was at stake was interpreting the Directive in light of and together with Treaty law. For whereas those rules relating to the risk of confusion and the concomitant rules on the burden of proof may well be a matter of national civil procedure, this did not mean that the rules relating to the burden of proof were exclusively a matter for the member states.

The rules of evidence do not belong to the rules of civil procedure governed by the Directive in so far as they concern the nature and adducing of evidence. National rules of civil procedure can indicate which party bears the burden of proof, which types of evidence are admissible, the form of the evidence, and whether the judge can stipulate the point in time up until which evidence may be adduced. These types of rules related to the nature of procedure and were not governed by the Directive.

However, this is quite separate to the question as to which party was responsible for ensuring that a specific factual matrix was clarified. The portent of this question extended beyond the mere modalities of the procedure and should be answered in light of both the significance and the aim of the directive. Consequently, this question was inextricably linked to that of the substantive law of the Directive. In that context it was pertinent to point out that in the Vienna Sales Convention, and the Spanish, French and German rules of international private law and civil procedure, the burden of proof was seen as an aspect of substantive law.

For these reasons, it would be in keeping with the aim of the Directive for the rule relating to the burden of proof to have a uniform content. The CJEU had already declared questions relating to the burden of proof to be admissible. Furthermore, if trade marks were incorrectly registered they were capable of restricting market access and constituting a barrier to the freedom to provide services so the CJEU ought to have the competence to answer the questions.

Questions Referred
According to the Curia website, the German Federal Patent Court has asked:

1. Does Article 3(1) and (3) of the directive preclude an interpretation of national law according to which, for an abstract colour mark (in this case: red HKS 13) which is claimed for services in the financial affairs sector, a consumer survey must indicate an adjusted degree of association of at least 70% in order to form a basis for the assumption that the trade mark has acquired a distinctive character following the use which has been made of it?

2. Is the first sentence of Article 3(3) of the directive to be interpreted to the effect that the time at which the application for the trade mark was filed – and not the time at which it was registered – is also relevant in the case where the trade mark proprietor claims, in his defence against an application for a declaration invalidating the trade mark, that the trade mark acquired a distinctive character, following the use made of it, in any event more than three years after the application, but prior to registration?

In the event that, under the abovementioned conditions, the time at which the application was filed is also relevant:

3. Is the trade mark to be declared invalid if it is not clarified, and can no longer be clarified, whether it had acquired a distinctive character, following the use made of it, at the time when the application was filed? Or does the declaration of invalidity require the applicant seeking that declaration to prove that the trade mark had not acquired a distinctive character, following the use made of it, at the time when the application was filed?

 
Comment
The German Federal Patent Court’s reference in Oberbank has been joined with an almost identical case brought by a Spanish banking group and docketed by the CJEU as Case C-218/13, Santander.

Traditionally, the law of evidence and the law of civil procedure often function to buttress the institution of property. In EU law, however, that function has not always been easy to achieve. As the German referring court pointed out in this reference, the ECJ’s judgment in Case C-108/97, Windsurfing Chiemsee Produktions- und Vertriebs GmbH (WSC) reflected the view that rules of evidence and civil procedure were governed by national law.

Will the CJEU change its approach? A decade has passed since the ECJ’s judgment in Case C-108/97, Chiemsee. In that decade, EU IP law has evolved. For example, in the area of EU database law, the CJEU appears to have completely cut itself free from its constitutional moorings in its bid to shore up ownership in intellectual property. Although the wording of the EU Database Directive said absolutely nothing on the law of evidence, in Case C-545/07, Apis-Hristovich EOOD v Lakorda AD, the English language version of the judgment created a circumstantial evidence rule for establishing that an extraction from a database had taken place. See further, Stephen Vousden, ‘Apis, Databases, and EU Law’ (2011) Intellectual Property Quarterly 215-226.

Update – 26 May 2014
The Third Chamber of the CJEU is due to hand down its judgment on 19 June 2014. It will be handed down together with that in Case C-218/13, Santander. It is unclear from the Curia website whether the judges had the benefit of a hearing.

Update – 6 August 2014
Judgment

A version of the CJEU’s judgment in Case C-217/13, Oberbank ECLI:EU:C:2014:2012 is reproduced below. The reproduction is not authentic. Only the versions of the document published in the ‘Reports of Cases’ or the ‘Official Journal of the European Union’ are authentic. The source of the reproduction is the Eur-Lex Europa web site. The information on that site is subject to a disclaimer and a copyright notice.

 

JUDGMENT OF THE COURT (Third Chamber)

19 June 2014 ( )

(Request for a preliminary ruling — Trade marks — Directive 2008/95/EC — Article 3(1) and (3) — Mark consisting of a contourless red colour, registered for banking services — Application for a declaration of invalidity — Distinctive character acquired through use — Evidence — Consumer survey — Time when distinctive character through use is acquired — Burden of proof)

In Joined Cases C‑217/13 and C‑218/13,

REQUESTS for a preliminary ruling under Article 267 TFEU from the Bundespatentgericht (Germany), made by decisions of 8 March 2013, received at the Court on 24 April 2013, in the proceedings

Oberbank AG (C‑217/13),

Banco Santander SA (C‑218/13),

Santander Consumer Bank AG (C‑218/13)

v

Deutscher Sparkassen- und Giroverband eV,

THE COURT (Third Chamber),

composed of M. Ilešič, President of the Chamber, C.G. Fernlund, A. Ó Caoimh, C. Toader and E. Jarašiūnas (Rapporteur), Judges,

Advocate General: M. Wathelet,

Registrar: A. Calot Escobar,

having regard to the written procedure,

after considering the observations submitted on behalf of:

–        Oberbank AG, by S. Jackermeier, Rechtsanwalt,

–        Banco Santander SA and Santander Consumer Bank AG, by B. Goebel, Rechtsanwalt,

–        Deutscher Sparkassen- und Giroverband eV, by S. Fischoeder, U. Lüken and U. Karpenstein, Rechtsanwälte,

–        the Spanish Government, by N. Díaz Abad, acting as Agent,

–        the Polish Government, by B. Majczyna, acting as Agent,

–        the United Kingdom Government, by S. Brighouse, acting as Agent, and by S. Ford, Barrister,

–        the European Commission, by F.W. Bulst and G. Braun, acting as Agents,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

Judgment

1        The present requests for a preliminary ruling concern the interpretation of Article 3(1) and (3) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2009 L 299, p. 25; corrigendum OJ 2009 L 11, p. 86).

2        The requests have been made in the course of two sets of proceedings between, first, in Case C‑217/13, Oberbank AG (‘Oberbank’) and, second, in Case C‑218/13, Banco Santander SA (‘Banco Santander’) and Santander Consumer Bank AG (‘Santander Consumer Bank’), on the one hand, and Deutscher Sparkassen- und Giroverband eV (‘DSGV’), on the other hand, concerning applications for a declaration of invalidity made in respect of a contourless red colour mark of which DSGV is the proprietor.

 Legal context

 EU law

3        Directive 2008/95 repealed and replaced First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1; corrigendum OJ 1989 L 207, p. 44).

4        Recital 1 in the preamble to Directive 2008/95 states:

‘The content of [Directive 89/104] has been amended …. In the interests of clarity and rationality the said Directive should be codified.’

5        Recitals 6 and 10 in the preamble to Directive 2008/95, which essentially correspond to the fifth and ninth recitals in the preamble to Directive 89/104, state:

‘(6)      Member States should … remain free to fix the provisions of procedure concerning the registration, the revocation and the invalidity of trade marks acquired by registration. They can, for example, determine the form of trade mark registration and invalidity procedures …

(10)      It is fundamental, in order to facilitate the free movement of goods and services, to ensure that registered trade marks enjoy the same protection under the legal systems of all the Member States. …’

6        Under Article 2 of Directive 2008/95, which is entitled ‘Signs of which a trade mark may consist’ and worded in the same terms as Article 2 of Directive 89/104:

‘A trade mark may consist of any signs capable of being represented graphically …, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’

7        Article 3 of Directive 2008/95, which is entitled ‘Grounds for refusal or invalidity’, which reproduces the content of Article 3 of Directive 89/104 without amending its substance, provides:

‘1.      The following shall not be registered or, if registered, shall be liable to be declared invalid:

(b) trade marks which are devoid of any distinctive character;

3.      A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character. Any Member State may in addition provide that this provision shall also apply where the distinctive character was acquired after the date of application for registration or after the date of registration.

…’

 German law

8        Paragraph 8(2)(1) of the Law on the protection of trade marks and other signs (Markengesetz) of 25 October 1994 (BGBl. 1994 I, p. 3082) (‘the MarkenG’), states:

‘The following shall not be registered:

1.      trade marks which are devoid of any distinctive character in relation to the goods or services concerned.’

9        Paragraph 8(3) of the MarkenG provides:

‘[Subparagraph 2(1)] … shall not apply where the trade mark has, before the date of the decision on registration, become accepted in the trade circles concerned following the use which has been made of it in respect of the goods or services for which registration has been sought.’

10      Paragraph 37(2) of the MarkenG is worded as follows:

‘If the examination reveals that the trade mark did not meet the conditions laid down in Paragraph 8(2)(1), (2) or (3) on the filing date …, but that the ground for refusal ceased to apply after the filing date, the application may not be refused if the applicant declares his agreement that, irrespective of the original filing date …, the date on which the ground for refusal ceased to apply is deemed to be the filing date and is relevant for the determination of seniority within the meaning of Paragraph 6(2).’

11      Under Paragraph 50(1) and (2) of the MarkenG:

‘1.      The registration of a trade mark shall be declared valid, on request, if it has been registered in contravention of [Paragraph 8].

2.      If the trade mark has been registered in contravention of [Paragraph 8(2)(1)], the registration may be declared invalid only if the ground for refusal still exists on the date of the decision on the application for a declaration of invalidity. …’

 The actions in the main proceedings and the questions referred for a preliminary ruling

12      The orders for reference state that, on 7 February 2002, DSGV filed an application for registration of a contourless red colour mark HKS 13 (‘the mark at issue’) in respect of a number of goods and services.

13      By decision of 4 September 2003, the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) (‘the DPMA’) dismissed that application. DSGV brought an action against that decision, limiting its application for registration to certain services in Class 36 of the Nice Agreement of 15 June 1957 concerning International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and submitting a consumer survey dated 24 January 2006.

14      By decision of 28 June 2007, the DPMA annulled that decision. It stated that, on the basis of the survey submitted, it had to be assumed that the mark at issue had gained a degree of acceptance in the trade circles concerned, within the meaning of Paragraph 8(3) of the MarkenG, of 67.9% for the remaining services covered by the application for registration. On 11 July 2007, that mark was accordingly registered for services in Class 36 corresponding, in essence, to various retail banking services.

15      On 15 January 2008, Oberbank applied for a declaration of invalidity in respect of the mark at issue maintaining, inter alia, that it had not acquired a distinctive character through use. DSGV contested that application.

16      By decision of 16 June 2009, the DPMA dismissed that application, considering that the mark at issue, although intrinsically devoid of distinctive character, had acquired a distinctive character through use, as evidenced by the consumer survey of 24 January 2006 and other documents submitted by DSGV.

17      Oberbank lodged an appeal before the referring court seeking the annulment of that decision and a declaration of invalidity in respect of the mark at issue. Before the referring court, Oberbank invokes the lack of distinctive character of that mark. DSGV contends that the appeal should be dismissed and, with regard to whether that mark has acquired a distinctive character through use, submits another consumer survey conducted in June 2011.

18      On 19 October 2009, Banco Santander and Santander Consumer Bank both sought a declaration of invalidity in respect of the mark at issue, on the basis of grounds similar to those relied on by Oberbank in its application of 15 January 2008. In addition, for the purpose of justifying their applications for a declaration of invalidity, they submitted several other consumer surveys and expert reports before the DPMA. DSGV has contested those applications.

19      After joining the two sets of proceedings, the DPMA, by decision of 24 April 2012, dismissed those applications on grounds similar to those put forward in its decision of 16 June 2009.

20      Banco Santander and Santander Consumer Bank brought an action against that decision before the referring court, similar to the action brought by Oberbank in the other case. In addition, they submitted that the burden of proof for distinctive character acquired through use, in the context of invalidity proceedings, must be borne by the proprietor of the mark. DSGV also contends that the action should be dismissed.

21      The referring court observes, in the first place, that the colour HKS 13 is intrinsically devoid of distinctive character and that, in order to establish whether a colour mark has acquired a distinctive character following the use which has been made of it, the case-law of the German Courts requires that a survey must be conducted so as to determine the ‘adjusted degree of association’ or the ‘degree of acceptance’ of the mark in question.

22      According to the referring court, having regard to the specific features of the case, only a degree of acceptance of over 70% would permit the conclusion that the mark at issue has a distinctive character acquired through use, the features in question having as their basis the fact that it is a colour per se and the expenditure incurred by DSGV on advertising does not offer any indication as to whether it has been able to gain acceptance for the tone HKS 13 as a trade mark on its own for the services offered.

23      The referring court asks what degree of acceptance in the trade circles concerned must there be for a contourless colour mark to be regarded as having a distinctive character acquired through use. The referring court observes that the Court has not yet ruled in that regard.

24      In the second place, the referring court considers that the proceedings turn on whether the mark at issue must have acquired a distinctive character through use on the date on which the application for registration is filed or the date on which the mark was registered. It states that, under German legislation, the registration of a trade mark must be declared invalid where the mark has not acquired a distinctive character through use before the date of the decision on registration (Paragraphs 8 and 50(1) of the MarkenG) and where it has not acquired a distinctive character through use on the date of the decision on the application for a declaration of invalidity (first sentence of Paragraph 50(2) of the MarkenG).

25      The referring court states that the German legislation must however be interpreted to the effect that the Federal Republic of Germany has not exercised the power laid down in the second sentence of Article 3(3) of Directive 2008/95. According to the referring court, Paragraph 8(3) of the MarkenG must be read in the light of Paragraph 37(2) of that law which requires that a mark may be registered only if it was distinctive on the date on which the application was filed. In the event that the mark acquired a distinctive character only after the date of application, Paragraph 37(2) of the MarkenG expressly provides for a deferral of seniority, which requires the agreement of the applicant. According to the referring court, the deferral of seniority is thus equivalent to a withdrawal of the application and to a subsequent, fresh application for the trade mark. The referring court states that the German legislation must therefore be interpreted to the effect that the trade mark must have acquired a distinctive character before the date of application and the same applies in the context of proceedings for a declaration of invalidity.

26      In the present case, if the date of registration is relevant, the required degree of acceptance of 70% has not been achieved. If, on the other hand, the date on which the application was filed is relevant, it is necessary to examine the situation prevailing on that date.

27      In the third place, the referring court points out that the proceedings also turn on the approach to be taken where certain relevant facts can no longer be determined.

28      In those circumstances, the Bundespatentgericht (Federal Patent Court) decided to stay the proceedings and to refer, in each of the cases in the main proceedings, the following questions to the Court of Justice for a preliminary ruling:

‘(1)      Does Article 3(1) and (3) of [Directive 2008/95] preclude an interpretation of national law according to which, for an abstract colour mark (in this case: red HKS 13) which is claimed for services in the financial affairs sector, a consumer survey must indicate an adjusted degree of association of at least 70% in order to form a basis for the assumption that the trade mark has acquired a distinctive character following the use which has been made of it?

(2)      Is the first sentence of Article 3(3) of [Directive 2008/95] to be interpreted to the effect that the time at which the application for the trade mark was filed — and not the time at which it was registered — is relevant in the case where the trade mark proprietor claims, in his defence against an application for a declaration invalidating the trade mark, that the trade mark acquired a distinctive character, following the use made of it, in any event more than three years after the application, but prior to registration?

(3)      In the event that, under the abovementioned conditions, the time at which the application was filed is also relevant:

Is the trade mark to be declared invalid if it is not clarified, and can no longer be clarified, whether it had acquired a distinctive character, following the use made of it, at the time when the application was filed? Or does the declaration of invalidity require the applicant seeking that declaration to prove that the trade mark had not acquired a distinctive character, following the use made of it, at the time when the application was filed?’

29      By decision of the President of the Court of 14 May 2013, the present cases were joined for the purposes of the written and oral procedure and the judgment.

 The questions referred

 Preliminary observations

30      The requests for a preliminary ruling refer to Directive 2008/95. The Court will, as a consequence, provide the interpretation of Directive 2008/95 which the referring court requests. It should nevertheless be stated that that directive, under Article 18 thereof, entered into force on the 20th day following its publication in the Official Journal of the European Union, that is to say 28 November 2008. It is apparent from the order of reference in Case C‑217/13 that Oberbank filed its application for a declaration of invalidity in respect of the mark at issue with the DPMA on 15 January 2008, when Directive 89/104 was still in force.

31      If the referring court should find that the main proceedings relate, in Case C‑217/13, to Directive 89/104, it should be stated that the answers given to the questions referred in the present case are applicable to that earlier legislation. In relation to the equivalent provisions of Directive 89/104, the provisions of Directive 2008/95 that are relevant for the case before the referring court were not substantively amended, as regards their wording, context or purpose, when Directive 2008/95 was adopted and which, pursuant to recital 1 in the preamble to that directive, merely codified Directive 89/104.

32      For the same reason, the case-law relating to the relevant provisions of Directive 89/104 is applicable to the equivalent provisions of Directive 2008/95.

 The first question

33      By its first question, the referring court asks, in essence, whether Article 3(1) and (3) of Directive 2008/95 must be interpreted as precluding an interpretation of national law according to which, in the context of proceedings raising the question whether a contourless colour mark has acquired a distinctive character through use, it is in every case necessary that a consumer survey indicate a degree of recognition of that mark of at least 70%.

34      Oberbank, Banco Santander and Santander Consumer Bank, and the Spanish and Polish Governments consider that that question should be answered in the negative. In support of that position, Oberbank relies on, inter alia, the special features of colour marks, Banco Santander and Santander Consumer Bank put forward the public interest in maintaining the availability of colours and the low suitability of the mark at issue as an effective trade mark, the Spanish Government invokes the inadequacy of the other evidence in respect of colour marks, and the Polish Government relies on the need to protect consumers against error.

35      DSGV, the United Kingdom Government and the European Commission consider that that first question should be answered in the affirmative. They maintain that Article 3(1) and (3) of Directive 2008/95 requires an assessment of all the relevant circumstances of the case.

36      It should be borne in mind at the outset that a colour mark per se is capable of constituting, under certain conditions, a trade mark within the meaning of Article 2 of Directive 2008/95 (see, to that effect, Case C‑104/01 Libertel EU:C:2003:244, paragraphs 27 to 42, and Case C‑49/02 Heidelberger Bauchemie EU:C:2004:384, paragraph 42).

37      However, the fact that a sign is, in general, capable of constituting a trade mark does not mean that the sign necessarily has a distinctive character for the purposes of Article 3(1)(b) of Directive 2008/95 in relation to a specific product or service (see, by analogy, Case C‑265/09 P OHIM v BORCO-Marken-Import Matthiesen EU:C:2010:508, paragraph 29 and the case-law cited). In the present case, it is apparent from the orders for reference that, while the mark at issue is capable of constituting a trade mark within the meaning of Article 2 of Directive 2008/95, it is however devoid of any inherently distinctive character in terms of Article 3(1)(b) of that directive. It is also apparent from the orders for reference that the referring court seeks, therefore, only to establish how it should be determined whether, following the use which has been made of it, that mark has acquired a distinctive character within the meaning of Article 3(3) and, in particular, whether that assessment may depend, in significant part, on the results of a consumer survey.

38      According to settled case-law, just as distinctive character is one of the general conditions for registering a trade mark under Article 3(1)(b) of Directive 2008/95, distinctive character acquired through use means that the mark must serve to identify the product or service covered by that mark as originating from a particular undertaking, and thus to distinguish that product or service from goods of other undertakings (Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee EU:C:1999:230, paragraph 46, and Case C‑299/99 Philips EU:C:2002:377, paragraph 35).

39      It is also settled case-law that, whether inherent or acquired through use, the distinctive character of a mark must be assessed in relation, on the one hand, to the goods or services covered by that mark and, on the other, to the presumed expectations within the trade circles concerned, that is to say, an average consumer of the category of goods or services in question, who is reasonably well-informed and reasonably observant and circumspect (Case C‑363/99 Koninklijke KPN Nederland EU:C:2004:86, paragraph 34 and the case-law cited, and Case C‑353/03 Nestlé EU:C:2005:432, paragraph 25).

40      As regards the question how to determine whether a mark has acquired a distinctive character through use, it is settled case-law that the competent authority for registering trade marks must carry out an examination by reference to the actual situation (Libertel EU:C:2003:244, paragraph 77, and Case C‑404/02 Nichols EU:C:2004:538, paragraph 27) and make an overall assessment of the evidence that the mark has come to identify the goods or services concerned as originating from a particular undertaking (Windsurfing Chiemsee EU:C:1999:230, paragraph 49, and Nestlé EU:C:2005:432, paragraph 31). Moreover, that evidence must relate to use of the mark as a trade mark, that is to say for the purposes of such identification by the relevant class of persons (Philips EU:C:2002:377, paragraph 64, and Nestlé EU:C:2005:432, paragraphs 26 and 29).

41      In the context of that assessment, the following items may, inter alia, be taken into consideration: the market share held by the mark in question; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identifies goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (Windsurfing Chiemsee EU:C:1999:230, paragraph 51, and Nestlé EU:C:2005:432, paragraph 31).

42      If, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identifies goods or services as originating from a particular undertaking because of the trade mark in question, it must in any event hold that the requirement laid down in Article 3(3) of Directive 2008/95 for the mark not to be excluded from registration or declared invalid is satisfied (see, to that effect, Windsurfing Chiemsee EU:C:1999:230, paragraph 52, and Philips EU:C:2002:377, paragraph 61).

43      It should also be stated that Union law does not preclude the competent authority, where it has particular difficulty in assessing the distinctive character acquired though use of the mark in respect of which registration or a declaration of invalidity is sought, from having recourse, under the conditions laid down by its own national law, to an opinion poll as guidance for its judgment (see, to that effect, Windsurfing Chiemsee EU:C:1999:230, paragraph 53 and the case-law cited). If the competent authority finds it necessary to resort to such a survey, it must determine the percentage of consumers that would be sufficiently significant (see, by analogy, Case C‑487/07 Budĕjovický Budvar EU:C:2009:521, paragraph 89).

44      However, the circumstances in which the requirement concerning the acquisition of a distinctive character through use, under Article 3(3) of Directive 2008/95, may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages (Windsurfing Chiemsee EU:C:1999:230, paragraph 52, and Philips EU:C:2002:377, paragraph 62).

45      In that regard, it must be observed that, in an overall assessment of the evidence that the mark has acquired a distinctive character through use, it may indeed appear, inter alia, that the perception of the relevant public is not necessarily the same for each of the categories of marks and that, accordingly, it could prove more difficult to establish the distinctive character, including distinctiveness acquired through use, of trade marks in certain categories than that of those in other categories (Case C‑218/01 Henkel EU:C:2004:88, paragraph 52 and the case-law cited, and Nichols EU:C:2004:538, paragraph 28).

46      However, Article 2 and Article 3(1)(b) and (3) of Directive 2008/95 make no distinction between different categories of trade marks. The criteria for assessing the distinctive character of contourless colour marks, such as the mark at issue in the main proceedings, including whether that mark has acquired a distinctive character following the use which has been made of it, are thus no different from those to be applied to other categories of trade mark (see, by analogy, Philips EU:C:2002:377, paragraph 48, and Nichols EU:C:2004:538, paragraphs 24 and 25).

47      The difficulties in establishing distinctive character which may be associated with certain categories of marks because of their nature — difficulties which it is legitimate to take into account — do not therefore justify laying down stricter criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law on other categories of marks (see, to that effect, Nichols EU:C:2004:538, paragraph 26, and, by analogy, OHIM v BORCO-Marken-Import Matthiesen EU:C:2010:508, paragraph 34).

48      It follows from the foregoing that it is not possible to state in general terms, for example by referring to predetermined percentages relating to the degree of recognition attained by the mark within the relevant section of the public, when a mark has acquired a distinctive character through use and that, even with regard to contourless colour marks, such as the mark at issue in the main proceedings, and even if a consumer survey may be one of the factors to be taken into account when assessing whether such a mark has acquired a distinctive character through use, the results of a consumer survey cannot be the only decisive criterion to support the conclusion that a distinctive character has been acquired through use.

49      In the light of those considerations, the answer to the first question is that Article 3(1) and (3) of Directive 2008/95 must be interpreted as precluding an interpretation of national law according to which, in the context of proceedings raising the question whether a contourless colour mark has acquired a distinctive character through use, it is necessary in every case that a consumer survey indicate a degree of recognition of at least 70%.

 The second question

50      By its second question, the referring court asks, in essence, whether the first sentence of Article 3(3) of Directive 2008/95 must be interpreted as meaning that, in the context of invalidity proceedings in respect of a mark which is intrinsically devoid of distinctive character, in order to assess whether that mark has acquired a distinctive character through use, it is necessary to examine whether such character was acquired before the date of filing of the application for registration of that mark, where the proprietor of the mark at issue maintains that the mark has, in any event, acquired a distinctive character through use after the date of filing of the application for registration, but before the date of registration. The referring court points out in that regard that German law must be interpreted to the effect that the Federal Republic of Germany has not exercised the power laid down in the second sentence of Article 3(3) of that directive.

51      In view of the last mentioned observation, DSGV and the Commission submit that that question is inadmissible. They consider, in essence, that the presentation of the national legal framework, as made by the referring court, is incorrect. The Federal Republic of Germany has exercised the power laid down in the second sentence of Article 3(3) of Directive 2008/95, which renders the second question hypothetical.

52      In that regard, it should be borne in mind that it is not for the Court, in the context of the judicial cooperation established by Article 267 TFEU, to give a ruling on the interpretation of provisions of national law, or to decide whether the interpretation given by the national court of those provisions is correct. The Court must take account, under the division of jurisdiction between it and the national courts, of the factual and legislative context, as described in the order for reference, in which the questions put to it are set (Case C‑518/08 Fundación Gala-Salvador Dalí and VEGAP EU:C:2010:191, paragraph 21 and the case-law cited, and Case C‑212/10 Logstor ROR Polska EU:C:2011:404, paragraph 30).

53      In those circumstances, the Court should answer the second question put to it on the basis of the finding made by the referring court that German law must, in the present case, be interpreted to the effect that the Federal Republic of Germany has not transposed into national law the power laid down in the second sentence of Article 3(3) of Directive 2008/95 and, consequently, the Court finds that that question is admissible.

54      As to the substance, Oberbank submits that the first sentence of Article 3(3) of Directive 2008/95 must be interpreted to the effect that the two dates given by the referring court are relevant and that proof of distinctive character acquired through use must be adduced for those two dates.

55      Banco Santander and Santander Consumer Bank and the Spanish and Polish Governments consider that, since the Member State in question has not exercised the power laid down in the second sentence of Article 3(3) of Directive 2008/95, proof as regards distinctive character acquired through use must relate to the date of filing of the application for registration. The Commission puts forward, in the alternative, the same interpretation. As for DSGV, it maintains that, in any event, the date of registration is relevant in the context of invalidity proceedings, such as those at issue in the main proceedings.

56      Under the first sentence of Article 3(3) of Directive 2008/95, a trade mark is not to be refused registration or be declared invalid in accordance with Article 3(1)(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character.

57      It is thus clear from the unequivocal terms of the first sentence of Article 3(3) of Directive 2008/95 that, contrary to what DSGV maintains, in the context of invalidity proceedings relating to a mark in respect of which one or more of the grounds for invalidity set out in Article 3(1)(b), (c) or (d) of that directive have been invoked, and where the applicability of at least one of those grounds has been established, it is only if the mark at issue has acquired a distinctive character following the use which has been made of it before the date of filing of the application for registration of that mark that it may escape the application of one or more of the grounds of invalidity invoked.

58      That literal interpretation is confirmed by the purpose of the provision of which that first sentence forms part. The second sentence of Article 3(3) of Directive 2008/95 expressly provides for Member States to extend the possibility set out in the first sentence thereof, in a situation where the mark has acquired a distinctive character following the use which has been made of it after the date of filing of the application for registration or, even, after the date of registration of that mark.

59      If the first sentence of Article 3(3) of Directive 2008/95 were to be interpreted as also concerning distinctive character acquired following use which has been made of the mark at issue after the filing of the application for registration, as stated by Oberbank and DSGV, the power offered to Member States by the second sentence of that article would be illusory and that provision would be rendered ineffective.

60      It should nevertheless be borne in mind that the interpretation set out in paragraph 57 above does not exclude the possibility that account may be taken, by the competent authority, of evidence which, although subsequent to the date of filing the application for registration, enables the drawing of conclusions on the situation as it was on that date (see, to that effect, Case C‑488/06 P L & D v OHIM EU:C:2008:420, paragraph 71 and the case-law cited).

61      It follows from those considerations that the answer to the second question is that, where a Member State has not exercised the power laid down in the second sentence of Article 3(3) of Directive 2008/95, the first sentence of Article 3(3) of that directive must be interpreted as meaning that, in the context of invalidity proceedings in respect of a mark which is intrinsically devoid of distinctive character, in order to assess whether that mark has acquired a distinctive character through use, it is necessary to examine whether such character was acquired before the date of filing of the application for registration of that mark. It is irrelevant in that regard that the proprietor of the mark at issue maintains that the mark has, in any event, acquired a distinctive character through use after the date of filing of the application for registration, but before the date of registration of that mark.

 The third question

62      By its third question, the referring court asks, in essence, whether the first sentence of Article 3(3) of Directive 2008/95 must be interpreted as precluding, in the context of invalidity proceedings, the mark at issue from being declared invalid where it is intrinsically devoid of distinctive character and the proprietor of that mark has failed to show that it has acquired a distinctive character by the use which has been made of it before the date of filing of the application for registration.

63      Oberbank, Banco Santander and Santander Consumer Bank and the Spanish Government consider that, in the context of invalidity proceedings, the burden of proof concerning the distinctive character acquired following the use which has been made of the mark at issue must be borne by the proprietor of that mark. The Polish Government maintains, on the other hand, that the answer to the third question concerns the exclusive competence of the Member States, in accordance with recital 6 in the preamble to Directive 2008/95.

64      DSGV and the Commission have doubts as to the admissibility of that question. In the alternative, DSGV submits that, in the context of invalidity proceedings, the burden of proof must be borne by the applicant. The Commission considers, in essence, that there is nothing to prevent the burden of proof from resting with the proprietor of the mark in question.

65      As a preliminary point, it is necessary, for the reasons set out in paragraph 52 above, to dismiss the objections put forward by DSGV and the Commission concerning the admissibility of the third question and to reply to that question on the basis of the finding made by the referring court that German law must, in the present case, be interpreted to the effect that the Federal Republic of Germany has not transposed into national law the power laid down in the second sentence of Article 3(3) of Directive 2008/95.

66      As to the substance, it is true that recital 6 in the preamble to Directive 2008/95 states, inter alia, that Member States should remain free to fix the procedural provisions concerning the invalidity of trade marks acquired by registration and determine, for example, the form of invalidity procedures. However, it cannot be inferred that the question of the burden of proof concerning distinctive character acquired through use in the context of invalidity proceedings pursuant to Article 3(1)(b), (c) or (d) of Directive 2008/95 constitutes such a procedural provision falling within the competence of Member States.

67      If the question of the burden of proof concerning distinctive character acquired by use which has been made of a mark in the context of invalidity proceedings were a matter for the national law of the Member States, the consequence for proprietors of trade marks could be that protection would vary according to the legal system concerned, with the result that the objective of ‘the same protection under the legal systems of all the Member States’ set out in recital 10 in the preamble to Directive 2008/95, where it is described as ‘fundamental’, would not be attained (see, by analogy, Case C‑405/03 Class International EU:C:2005:616, paragraph 73 and the case-law cited, and Case C‑479/12 H. Gautzsch Großhandel EU:C:2014:75, paragraph 40).

68      In view of that objective and the structure and purpose of Article 3(3) of Directive 2008/95, the Court finds that, in the context of invalidity proceedings, the burden of proof concerning distinctive character acquired following the use which has been made of the mark at issue must be borne by the proprietor of that mark which invokes that distinctive character.

69      First, in the same way that distinctive character acquired following the use which is made of a mark is, in proceedings for registration, an exception to the grounds for refusal listed in Article 3(1)(b), (c) or (d) of Directive 2008/95 (see, to that effect, Case C‑108/05 Bovemij Verzekeringen EU:C:2006:530, paragraph 21), distinctive character acquired following the use which is made of a mark is, in the context of invalidity proceedings, an exception to the grounds for invalidity listed in Article 3(1)(b), (c) or (d). Since it is an exception, the onus is on the party seeking to rely on it to justify its application.

70      Second, the Court finds that it is the proprietor of the mark at issue which is best placed to adduce evidence in support of the assertion that its mark has acquired a distinctive character following the use which has been made of it. The same applies, in particular, to evidence capable of establishing such use, in respect of which the case-law cited in paragraphs 40 and 41 above contains a list of examples, such as evidence relating to how intensive, widespread and long-standing use of the mark has been and the amount invested in promoting it.

71      Consequently, where the proprietor of the mark at issue is requested by the competent authority to adduce proof of distinctive character acquired following the use which has been made of a mark which is intrinsically devoid of distinctive character but fails to do so, that mark must be declared invalid.

72      The reasons why the proprietor of the mark fails to adduce that evidence are irrelevant in that regard. Otherwise, it would be possible for a mark to continue to be protected under Directive 2008/95 even though, since it falls within the scope of one of the grounds for invalidity set out in Article 3(1)(b), (c) or (d) of that directive, it is incapable of fulfilling the essential function of the mark and ought not, consequently, to be protected under that directive. For that very reason, contrary to what DSGV maintains, imposing the burden of proof in that way does not breach the principle of the protection of the legitimate expectations of the proprietor of the mark.

73      Moreover, as is apparent from paragraph 61 above, under the first sentence of Article 3(3) of Directive 2008/95, in order to assess whether a mark has acquired a distinctive character through use, it is necessary to examine whether such character was acquired before the date of filing of the application for registration of that mark.

74      In the light of the foregoing, the answer to the third question is that where a Member State does not exercise the power laid down in the second sentence of Article 3(3) of Directive 2008/95, the first sentence of Article 3(3) of that directive must be interpreted to the effect that it does not preclude, in the context of invalidity proceedings, the mark at issue from being declared invalid where it is intrinsically devoid of distinctive character and the proprietor of that mark has failed to show that it has acquired a distinctive character following the use which has been made of it before the date of filing of the application for registration.

 Costs

75      Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the national court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

On those grounds, the Court (Third Chamber) hereby rules:

1.      Article 3(1) and (3) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as precluding an interpretation of national law according to which, in the context of proceedings raising the question whether a contourless colour mark has acquired a distinctive character through use, it is necessary in every case that a consumer survey indicate a degree of recognition of at least 70%.

2.      Where a Member State has not exercised the power laid down in the second sentence of Article 3(3) of Directive 2008/95, the first sentence of Article 3(3) of that directive must be interpreted as meaning that, in the context of invalidity proceedings in respect of a mark which is intrinsically devoid of distinctive character, in order to assess whether that mark has acquired a distinctive character through use, it is necessary to examine whether such character was acquired before the date of filing of the application for registration of that mark. It is irrelevant in that regard that the proprietor of the mark at issue maintains that the mark has, in any event, acquired a distinctive character through use after the date of filing of the application for registration, but before the date of registration of that mark.

3.      Where a Member State does not exercise the power laid down in the second sentence of Article 3(3) of Directive 2008/95, the first sentence of Article 3(3) of that directive must be interpreted to the effect that it does not preclude, in the context of invalidity proceedings, the mark at issue from being declared invalid where it is intrinsically devoid of distinctive character and the proprietor of that mark has failed to show that it has acquired a distinctive character following the use which has been made of it before the date of filing of the application for registration.

[Signatures]


Language of the case: German.

 
 
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