With the decision dated 21.07.2016 (file: l ZB 52/15) the German federal court repealed the decision of cancelling the color trade mark “Sparkassen-Rot”. Therewith, the conflict between the Sparkassenverband and the Santander Banking Group which has been going on for various years has now been decided.

Since 2007, the German Sparkassenverband owns the German Abstract color mark “Red” (HSK 13) for the services “banking services for private customers”. The Santander Banking Group, however, uses an almost identical color shade (HSK 14) for the same services.

Therein, the Sparkassenverband judged an infringement of their color trademark and sued the Santander Banking Group according to this infringement. Subsequently, the Santander Banking Group requested the deletion of the color trademark “Red” with the German Patent and Trademark Office. The German Patent and Trademark Office, however, rejected the application of cancellation (decision of 19 March 2013 – 33 W (pat) 33/12).

Consequently, the Santander Banking Group filed an appeal against this decision with the German Patent Court. Due to the fact that the use of the color red is conventional for the Banking sector (decision of 03 July 2015, file: 25 W (pat) 13/14), the cancellation of the color mark was decided then.

Against this decision the Sparkassenverband filed an appeal with the German Federal Court. The Court repealed the decision of the German Patent Court. In view of the BGH an absolute protective obstacle appears due to a lack of distinctiveness according to paragraph 8 ll Nr. 1 MarkenG since abstract color marks are basically not distinctive. Moreover, the public normally recognizes a color as a decorative element and not as a product identification. Just as with other forms of trademarks the market penetration of abstract color marks however, is sufficient in case the predominant part of the public recognizes product identification for the goods and services for which the trademark is registered. The opinion research reports legitimate the assumption of the market penetration at least at the point of time of the decision about the application of cancellation in 2015. Therefore, the color trademark cannot be cancelled according to paragraph 50 ll S.1 MarkenG.

As a consequence, the decision of the BGH allows the Sparkassenverband to prohibit the use of this special red color for the Santander Banking Group and other financial service providers in Germany as long as the color is not only used as a decorative element.