No pink skies ahead

Author: Lars Nysten, Benelux and European trademark and design attorney

T-Mobile (Deutsche Telekom AG) has recently lost three Benelux color marks that offered protection for a Magenta color in relation to telecommunication services.

The three cancellation actions were filed in the name of a Dutch Claimant Lebara B.V. against three closely related color marks and primarily based on the ground of a lack of distinctive character.

In the Benelux, color marks are generally refused on that ground as they are considered inherently incapable of distinguishing the goods or services of a particular undertaking. However, if an Applicant can demonstrate that the trademark application has acquired distinctive character through use, the trademark may still be accepted for registration. The bar to demonstrate acquired distinctiveness is, however, very high, as the Applicant should be able to present proof throughout the territory of the Benelux. Providing a sufficient amount of evidence proves difficult in practice, which is again confirmed by the three cases at stake.

Lebara argued that the evidence presented was insufficient to satisfy the conditions of acquired distinctiveness through use. Firstly, the evidence didn’t extend to all member states, according to Lebara. Evidence provided concerned mainly the Netherlands as well as countries outside the Benelux, the latter being irrelevant. Secondly, the evidence didn’t concern all the registered services. For instance, it didn’t concern “rental or design services”. Thirdly, the registered color had been used in a form deviating from the registered form, which would have altered the distinctive character of the trademark. Finally, Lebara argued that the market surveys submitted by the defendant weren’t reliable as the respondents could have guessed a commercial origin.

Now, on 23 August 2024, The Office rendered decisions in favor of Lebara and cancelled all three Benelux color marks. Although the office confirms that T-Mobile is one of the largest telecom providers in the world and filed substantive evidence in all cases, T-Mobile seems not to be active as a telecom provider in the consumer markets of Belgium and Luxembourg. This makes acquired distinctiveness less likely according to the Office. It therefore considered that, although the evidence relating to the Netherlands was substantial, it did not sufficiently demonstrate that the Benelux public as a whole has come to recognize the color mark as a trademark.

The Office explicitly mentioned that the results of the market survey in the Netherlands could not be extrapolated to Belgium and Luxembourg, as the circumstances and extent of use in these two countries clearly differ.

To conclude, it should be noted that T-Mobile still owns an EU trademark registration for the same Magenta color. This registration encompasses the Benelux. However, numerous cancellation procedures were filed against this trademark and, at the moment, two of those procedures are still pending. This means that the trademark might still be cancelled. This obviously jeopardizes T-Mobile’s EU-wide trademark protection and might possibly leave them without any protection for the color as such in the Benelux.

Are we approaching the end of T-Mobile’s monopoly on the Magenta color mark for telecommunication services within the Benelux?