Is there such a thing as Nivea-Blue?

Author: Sebastian Osterrieth

The German Federal Patent Court (BPatG) has recently strengthened Nivea-producer Beiersdorf’s abstract color mark “Blue” in Germany (October 18, 2019 – 27 W (pat) 1/17). Beiersdorf and its UK competitor Unilever had fought over the German trademark’s existence for more than ten years.

In 2005, Beiersdorf had filed the abstract color mark blue (Pantone 280 C). Since a color as such may usually not be monopolized by one company, the Hamburg-based cosmetics giant claimed that the blue tone had acquired distinctiveness among the addressed public as a trademark for cosmetics, namely skin and personal care products. The trademark was registered by the German Patent and Trade Mark Office (Deutsches Patent- und Markenamt, DPMA) in 2007 for that category of goods. Unilever immediately applied for cancellation of the trademark at the DPMA, claiming that the requirements for acquired distinctiveness of the mark were not met. The DPMA agreed with these lines of argument and ordered the cancellation of the trademark in 2010. The color blue as such would not be perceived as a trademark, but merely as decorative background for the actual “Nivea” trademark. Beiersdorf filed an appeal with the BPatG and lost. Beiersdorf subsequently lodged an appeal on a point of law with the German Federal Supreme Court (Bundesgerichtshof, BGH) and prevailed (July 9, 2015 – I ZB 65/13 – Nivea Blue). The case was remanded to the BPatG, which ordered evidence to be submitted in the form of consumer survey. The court finally indicated that it considered the trademark’s acquired distinctiveness as proven for certain skin and personal care products, namely deodorants, hair care, skin care, and facial care products, shower and bath products, soaps, shaving foam, shaving gel, and aftershave. As a consequence, Unilever withdrew the application for cancellation.

Following the BGH ruling, this outcome had been by no means certain. In its initial 2013 decision, the BPatG had placed far too high demands on the degree of distinctiveness required for acquiring distinctive character of a color mark through use. The BGH then clarified that a degree of distinctiveness of more than 50% was generally sufficient for abstract color marks. This is the case where more than half of the participants in a consumer survey assign the color to certain types of goods of a specific company. Nivea blue achieved 57.95%; the Federal Patent Court had wrongly demanded more than 75%. However, the BGH also considered the first consumer survey to be methodologically incorrect, as the color cards shown to survey participants had displayed the color blue with a white border. This could have made respondents think of the blue-white combination of Nivea products, which was not even claimed in the case at issue. Therefore, a new consumer survey had to be drawn up.

In practice, the acquired distinctiveness of trademarks that are inherently devoid of distinctive character can only be successfully asserted by submitting a factual, methodologically accurate consumer survey. The German courts have established numerous specific requirements for the practice of consumer surveys. Nevertheless, disputes of ten years or more are not unusual in cancellation proceedings.