Beiersdorf AG, manufacturer of Nivea, won a ruling from Germany’s Federal Supreme Court (BGH) that gives it a second chance to defend its trademark for the blue color on its Nivea products in a legal battle with Unilever NV (court case number: I ZB 65/13). On July 9, 2015, the BGH ordered a reopening of the proceedings before the German Federal Patent Court (BPatG).
The suit is part of an long-standing legal battle between the two DAX listed companies over their dark blue colors (Panthone 280 C) used in the Dove and Nivea brands.
“Since 1925, the color Blue stands for the trademark values of Nivea. The blue tin is the ‘face’ of the brand and the basis of the global design language of the Nivea products,” said Inken Hollmann-Peters, Vice President Corporate Communications & Sustainabilitya at Beiersdorf. “That’s why we leave nothing untried to protect the iconic color image.”
In the preceding instance, the BPatG had applied a strict standard, deciding that an abstract color trademark can only be registered or maintained as a registered trademark, if 75 percent of the relevant consumers associate the color with the trademark. The Nivea Blue trademark did not fulfill this strict criterium. However, according to the BGH the threshold must now be lowered to a more moderate 50 percent.
Dr. Wolfgang Büscher, chairman of a panel of five judges at the highest civil court, said one issue at trial was whether “the federal patent court set a standard that is too strict.”
Beiersdorf said it welcomed the decision as it regards the color as a trademark and not only as a decorative background.
The number of law suits over abstract colors are currently on the rise. Mondelez International Inc. and Nestlé SA are fighting over a trademark for the color “purple”, which is used by Mondelez for the packaging of Cadbury’s Dairy Milk bars. Moreover, the BPatG recently ruled in a law suit brought by the Spanish bank Santander SA that a trademark for the color “red” owned by the German Association of Savings and Loans Banks (Deutsche Sparkassen- und Giroverband, DSGV) should be cancelled.
Update (May 10, 2016): The 25th Senate of the Federal Patent Office (BPatG) cancelled the trademark for the color “red” of the German Association of Savings and Loans Banks (BPatG, GRUR 2015, 796). An appeal was filed against this decision, so that the Federal Supreme Court will have the final words in this case (I ZB 52/15).