Lebara succeeds in invalidating Benelux color marks of Deutsche Telekom AG (T-Mobile)
T-Mobile has always been upfront about protecting its color trademarks.
One of its trademarks specifies one specific magenta shade.
The company acted quite fiercely against attempts to infringe on its color mark in the past, not only in Benelux countries but also in other countries. Many, many companies received cease and desist letters or even injunctions because of the use of an identical or similar color. Plenty of these cases reached newspaper headlines.
Color marks are special marks that cannot be obtained easily. Acquired distinctiveness (gaining recognition through use) is normally needed to obtain trademark protection. For years, the T-Mobile color mark was an example of a successful color mark and was often mentioned alongside KLM blue and KPN green.
For the Benelux, things seem to have changed now, and that is not that is not solely due to T-Mobile no longer being active as a telecom brand in the Netherlands because of it’s recent rebranding to Odido.
Lebara, a known challenger in the telecom market, even before this rebranding took place, filed an application for cancellation of the red and magenta color marks owned by Deutsche Telekom AG before the Benelux Trademark Office. The outcome of these cancellation procedures is known now.
In these procedures, Deutsche Telekom argued that the magenta mark is inherently distinctive. They indicate that the relevant public in the Benelux has become accustomed to recognizing colors as an indication of origin concerning telecommunication services. Deutsche Telekom explains that the telecom market is very specific and clearly defined. Since the liberalization of the market in the late 1980s, it is characterized by the existence of only a few providers. These providers each use a unique color to represent their brand identity: KPN uses the color green, T-Mobile the color magenta, Vodafone the color red, and Ziggo the color orange.
In geographical respects, the bar of acquired distinctiveness is, however, high. The Benelux is an indivisible territory. This means that a sign can only be a valid trademark if it is valid throughout the Benelux. Acquired distinctiveness will therefore have to be demonstrated throughout the Benelux, or at least in areas where the trademark was initially devoid of distinctive character.
In the case of color marks it may be assumed that the assessment of distinctiveness applies to the entire Benelux public. Acquired distinctiveness must therefore be proven throughout the territory of the Benelux.
In Belgium and Luxembourg, the defendant did not seem to be active as a telecom provider, at least not in the consumer market. The defendant claims to have been active in Belgium under the name T-Systems but those activities appear to be more business-to-business and not aimed at the general public, to which the services are (also) directed, and are in any case considerably less intensive than in the Netherlands. This makes acquired distinctiveness less likely.
While Deutsche Telekom has certainly shown that the Benelux public outside of the Netherlands has also been or may have been confronted with the sign in a variety of ways, the Office considers that it has not been sufficiently demonstrated that, as a result, part of the public has actually come to recognize it as a trademark.
The Benelux Office therefore concludes that T-Mobile has failed to prove that their color marks have acquired distinctiveness as a trademark throughout the Benelux. For this reason, the Office cancels the Benelux marks in question.
An appeal against this decision before the Benelux courts is still possible, by the way!
Author: Erik Stegeman
Bio: Erik Stegeman is a trademark attorney and specialist in trademark protection for bands, DJs and artists. His client portfolio includes many famous DJ’s like Charlotte de Witte, Swedish House Maffia and Tiësto. He writes a lot about music trademark infringements. And if you are lucky, he will give you hints on the latest band and DJ’s.