Joined Cases C‑217/13 and C‑218/13

Oberbank AG and Others

v

Deutscher Sparkassen- und Giroverband eV

(Requests for a preliminary ruling from the Bundespatentgericht)

‛Reference 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’

Summary — Judgment of the Court (Third Chamber), 19 June 2014

Approximation of laws — Trade marks — Directive 2008/95 — Registration of a trade mark refused or trade mark declared invalid — Lack of distinctiveness — Exception — Distinctive character acquired through use — Consumer survey (European Parliament and Council Directive 2008/95, Arts 3(1) and (3) Approximation of laws — Trade marks — Directive 2008/95 — Registration of a trade mark refused or trade mark declared invalid — Lack of distinctiveness — Exception — Distinctive character acquired through use — Date relevant to the examination (European Parliament and Council Directive 2008/95, Art. 3(3), 1st and 2nd sentences) Approximation of laws — Trade marks — Directive 2008/95 — Registration of a trade mark refused or trade mark declared invalid — Lack of distinctiveness — Exception — Distinctive character acquired through use — Burden of proof (European Parliament and Council Directive 2008/95, Art. 3(3), 1st and 2nd sentences)

Article 3(1) and (3) of Directive 2008/95 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%. (see para. 49, operative part 1) Where a Member State has not exercised the power laid down in the second sentence of Article 3(3) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks, 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. (see para. 61, operative part 2) Where a Member State does not exercise the power laid down in the second sentence of Article 3(3) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks, 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. (see para. 74, operative part 3)

Joined Cases C‑217/13 and C‑218/13

Oberbank AG and Others

v

Deutscher Sparkassen- und Giroverband eV

(Requests for a preliminary ruling from the Bundespatentgericht)

‛Reference 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’

Summary — Judgment of the Court (Third Chamber), 19 June 2014

Approximation of laws — Trade marks — Directive 2008/95 — Registration of a trade mark refused or trade mark declared invalid — Lack of distinctiveness — Exception — Distinctive character acquired through use — Consumer survey (European Parliament and Council Directive 2008/95, Arts 3(1) and (3) Approximation of laws — Trade marks — Directive 2008/95 — Registration of a trade mark refused or trade mark declared invalid — Lack of distinctiveness — Exception — Distinctive character acquired through use — Date relevant to the examination (European Parliament and Council Directive 2008/95, Art. 3(3), 1st and 2nd sentences) Approximation of laws — Trade marks — Directive 2008/95 — Registration of a trade mark refused or trade mark declared invalid — Lack of distinctiveness — Exception — Distinctive character acquired through use — Burden of proof (European Parliament and Council Directive 2008/95, Art. 3(3), 1st and 2nd sentences)