In Germany, and in Europe for that matter, the trademark ‘Nivea’ for cosmetics is a well-known trademark of the German manufacturer Beiersdorf.
But most consumers in Europe will not only recognise ‘Nivea’ cosmetics by the word itself; they will most probably also recognise and remember the striking, unitary colour blue of the packaging.
Beiersdorf has been using the colour on its packaging for ages—that is at least the impression that the average German consumer may have when he or she thinks about Nivea, the products marketed under that brand or—arguably—even when he or she generally thinks of cosmetics.
The colour blue (Pantone 280 C), used for all Nivea products, was registered by Beiersdorf as an abstract colour mark at the German Patent and Trademark Office in 2007.
The trademark covers “preparations for body and beauty care, namely skin and body care products”. It was registered because of sufficient “market penetration”, which is a statutory requirement for registration if the trademark may otherwise not be capable of being registered due to, for example, having a lack of distinctive character (German Trademarks Act, section 8 paragraph 3).
At the request of its competitor Unilever, the Federal Patent Court in Munich ruled that the abstract colour mark should be cancelled. Beiersdorf filed an appeal to the Federal Court of Justice against that decision.
The court of justice reversed the decision in July and remanded the case back to the patent court.
In the decision, the court of justice held that there were, in principle, two grounds to refuse the registration of the mark. First, because abstract colour marks are generally not regarded as having distinctive character; the reason for this is that the public generally perceives abstract colours as decorative and not as a trademark.
"The court held that sufficient market penetration could be assumed if more than 50% of the public concerned perceived the abstract colour mark as a product trademark."
Furthermore, the relatively dark colour of the blue in question may be perceived as an indication of the products concerned, namely skincare products to be used at night, or as an indication of a certain target audience (skin and body care products for men). As a consequence, the colour may belong to the public domain with regard to the specific product groups for which it is registered.
However, the court of justice could not exclude the possibility that Beiersdorf could successfully argue that the colour mark enjoyed a sufficient market penetration and therefore must not be cancelled.
The court held that sufficient market penetration could be assumed if more than 50% of the public concerned perceived the abstract colour mark as a product trademark. In contrast, the patent court had held that more than 75% of the general public had to associate the respective colour mark with a specific company in the field of skin and body care products.
The court of justice said that this standard was too strict. The patent court must now obtain the opinion of a recognised opinion research centre in order to ascertain whether the requirements of market penetration may be established.
Beiersdorf had included a survey in the proceedings before the patent court. The court of justice held that this could not be used for two reasons.
First, because the survey did not differentiate between different product segments within the field of skin and body care products.
Second, during the preparation of the opinion, the people tested had been confronted with cards showing the colour mark with a white edge. The court said that it could not exclude the possibility that this may have influenced the respondents in favour of Beiersdorf since the well-known Nivea packaging showed the blue colour in combination with a white writing of the trademark.
According to the court, only cards with the blue colour would have been correct in order to ascertain whether the abstract colour itself was perceived as a trademark.
Jens Künzel is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: firstname.lastname@example.org
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