As Blue as a NIVEA Cream Tin – Requirements for Acquiring Distinctiveness

The German Federal Supreme Court Rules on the Blue Color Trade Mark of German Cosmetics Giant Beiersdorf

On 9 July 2015, the German Federal Supreme Court (BGH) ruled on the validity of the blue color mark of the German beauty care company Beiersdorf. The BGH specified the requirements for acquiring distinctiveness with regard to abstract color marks by stating that a color can be registered as a trademark if half of consumers linked the concerned product to that color. Thus, the BGH clarified that abstract color marks acquire distinctiveness under the same conditions as other trade marks.

Since 1925, Beiersdorf has been using the color blue for its well-known NIVEA skin care products and in 2007 it registered an abstract blue color mark (color shade “PANTONE 280 C”) for skin and body care products in Germany.

Beiersdorf’s rival Unilever, who uses the color blue to advertise its Dove skin care products, demanded cancellation of the trademark. Unilever argued that the blue color mark would be devoid of any distinctive character and that the availability of the color blue has to be preserved as it is used as reference to both night care products and personal care products for men.

When the German Federal Patent Court (BPatG) agreed with Unilever and cancelled the trademark, Beiersdorf appealed to the BGH.

The BGH confirmed that the blue colour indeed describes the product’s purpose – night care products/personal care products for men – and is not distinctive at all.

However, according to the BGH, it can not be ruled out that the mark has acquired distinctiveness due to its use.

Beiersdorf had submitted a survey which proved that slightly less than 55% of consumers recognize the color blue in relation to skin and body care products. The BPatG has held that this recognition level was too low as an abstract color mark could only be deemed to have acquired distinctiveness if a recognition value of 75% is reached. The BGH disagreed and ruled that a recognition value of 50% is sufficient, even where an abstract colour mark is concerned.

Therefore, the BGH remitted the case to the BPatG for retrial. But at the same time, the BGH made clear that it does not consider the existing survey to be sufficiently convincing. The survey was criticized by the BGH because the participants were shown a blue card with a white frame, which might have had a positive influence on the recognition level, as the typical NIVEA product design consists of a combination of white elements on a blue background. The outcome of the proceedings will, therefore, depend on Beiersdorf’s success in providing a new, more neutral survey.

We will continue to monitor the dispute and will report further on Beiersdorf’s attempts to obtain a trademark for the color blue in Germany.

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