Beck-Verlag uses the colour mark “orange” for the Neue Juristische Wochenzeitschrift (NJW), which has been published since 1947 and is mainly read by lawyers, notaries, judges, judicial officers, legal trainees and law students. According to the entry in Wikipedia, the weekly circulation amounts to a good 30,000 copies.
In a written submission dated 15.10.2015, the applicant in the proceedings requested cancellation of the abstract colour mark “Orange” on the grounds of absolute grounds for refusal under Section 50 Trademark Law, relying on various grounds for refusal. The German Patent and Trade Mark Office rejected the request for cancellation. The Federal Patent Court dismissed the applicant’s appeal against the decision of the German Patent and Trade Mark Office on the basis of the oral hearing on 2.10.2019. The applicant’s appeal on points of law was directed against this, whereby the subject matter of the proceedings before the Federal Supreme Court was only the ground for refusal of lack of distinctiveness pursuant to Section 8 (2) No. 1 Trademark Law.
Both the Federal Patent Court and the Federal Supreme Court found that the abstract colour mark “orange” was devoid of distinctive character. The trade mark could therefore only endure if this ground for refusal had been overcome either on the date of the trade mark application on 10.6.2008 (see BGH WRP 2018, 451 – Quadratische Tafelschokoladenverpackung I; BGH GRUR 2013, 1143 – aus Akten werden Fakten) or at the time of the decision on the cancellation request (this being the conclusion of the oral hearing before the Federal Patent Court on 2.10.2019) by prevailing in the market pursuant to Section 8(3) MarkenG. An application for cancellation under Section 50 Trade-mark Law is only successful if the ground for refusal still exists at the time of the decision, Section 50(2), first sentence, Trademark Law. Accordingly, if the ground for refusal had already been overcome on the date of filing the trade mark application, the application for cancellation cannot be successful for this reason alone. In other words, if the ground for refusal had been overcome on the date of filing the trade mark application, the registered trade mark will continue to exist, even if the requirements for passing off are no longer fulfilled at a later date.
Assertion of distinctiveness requires that, in principle, at least 50% of the relevant public perceive the sign applied for as a trade mark of the applicant (see, inter alia, Ströbele/Hacker/Thiering, 13th ed., § 8, marginal no. 665 with further references). The relevant public in this case were lawyers, notaries, judges, judicial officers, trainee lawyers and law students. A survey report according to which more than 50% of the public concerned considered the colour mark “orange” to be a trade mark of Beck-Verlag was not available in the proceedings.
The Federal Patent Court was of the opinion that the ground for refusal of lack of distinctive character had been overcome by prevailing in the trade. It was true that a corresponding demoscopic expert opinion was not available. However, indirect indications such as turnover, market share, intensity, geographical distribution and duration of use of the trade mark for the legal journal “Neue Juristische Wochenschrift” would suggest that the ground for refusal had been overcome at the time of filing the application by way of acceptance by the public pursuant to Section 8 (3) Trademark Law. It was not beyond doubt that the facts and indications established, which proved that the NJW was well known, were sufficient to render proof that the colour mark had become established in the relevant circles of the public. However, the applicant’s submission in this respect was unsubstantiated, so that the remaining doubts would be to the applicant’s detriment.
Accordingly, the Federal Patent Court took the view that the applicant had to prove in the proceedings that the ground for refusal of lack of distinctive character had not been overcome by prevailing in the trade. So far, this was also in line with the case law of the Federal Supreme Court.
With the aforementioned decision of 22.7.2021, the BGH abandoned the case law according to which remaining doubts as to whether or not a ground for refusal existed would be to the detriment of the applicant. In general, it was rather up to the trade mark proprietor to prove in cancellation proceedings those circumstances from which the (continued) existence of his trade mark would result. In the present case, Beck-Verlag had so far failed to prove that on the date of the application for registration of the trade mark or on the date of the decision on the application for cancellation, the trade mark had become established.
For this reason, the Federal Court of Justice set aside the decision of the Federal Patent Court and referred the case back to the Federal Patent Court. In the further proceedings, Beck-Verlag will have the opportunity to prove, by means of an expert opinion, that there was an assertion of distinctiveness at the time of filing or at the time of the decision (which is the date of the conclusion of the new hearing before the Federal Patent Court).
Conclusion:
If a trade mark has been registered only on the basis of acceptance by the public, the proprietor of the trade mark should have a demoscopic opinion that more than 50% of the public concerned considered the trade mark to be the applicant’s trade mark at the time of filing. If this is not the case, the trade mark proprietor should ensure that such a demoscopic opinion is available at the latest at the time of the decision on an application for cancellation. Furthermore, the trade mark proprietor should be able to submit documents on the market share, the intensity of use, the geographical distribution, the duration of use, and the advertising expenditure, and should also obtain opinions from chambers of commerce and other professional associations.
