Obtaining a distinctive character through use is only to be examined if the applicant invokes this in due time.[1] The application for a finding of acquired distinctiveness can also be filed in the alternative in the case of an EU trade mark (Art. 2 II EUTMIR) and subsequently in the case of a German trade mark. If an EU trade mark is registered as a result of acquired distinctiveness, the applicant has no procedural claim to a finding that it also has inherent distinctiveness.[2]
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In determining whether a trade mark has acquired distinctiveness through use, all factors which may show that the trade mark has acquired the capacity to serve as an indication of origin are relevant. [3] Account may be taken[4] of the market share held by the trade mark, the intensity, geographical distribution and duration of use of the trade mark, the advertising effort made by the undertaking for the trade mark, the proportion of the relevant public which recognises the product as originating from a particular undertaking on the basis of the trade mark, and statements made by chambers of commerce and industry or other professional associations. If the public concerned, or at least a significant part thereof, recognises the goods as originating from a particular undertaking on the basis of the trade mark, the requirement of the provision is necessarily fulfilled.[5] It is important that the public is not only confronted with the trade mark at the time of the purchase decision, but also beforehand, for example in advertising, and at the time of consumption of the goods. However, since the public's attention is highest at the time of preparation of the purchase decision, this time is of the greatest importance.[6]
In the overall assessment to be made, it may be particularly important if an undertaking is internationally active and advertises extensively; in such a case, the GC has considered a market share of 9% under the trade mark in question to be sufficient to prove acquired distinctiveness.[7] However, the situation is different if the market shares in different Member States differ greatly. [8] An annual turnover of several billion euros in individual states and annual advertising expenditure in the tens of millions are a sign of particularly intensive use.[9] The probative value of statements by interest groups is not called into question by the fact that their content may have been coordinated by the trade mark proprietor.[10]
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However, the applicant's efforts are only taken into account to the extent that they are objectively reflected in the perception of the expression in question by the relevant public.
Neither the monitoring of the use of the name in question in the market nor agreements with third parties not to use this name descriptively guarantee that the public actually perceives the name as an indication of origin. The measures are therefore not capable of proving acquired distinctiveness.[11]The same applies to general sales figures of the applicant, unless they contain an indication of the market share attributable to the specific mark applied for, to the indication of market shares within the EU as a whole without a breakdown by individual Member State, and to sales catalogues and press articles. [12] The number of hits on a website or the number of downloads of an app for mobile phones of over one million downloads are not sufficient proof. 13] Furthermore, proof cannot be provided by means of undated materials without indicating the location. 14]Even catalogues can only prove distribution, but not the extent of distribution or the way in which the trade mark is perceived by the public. [15] Even events with several thousand visitors do not prove well-knownness among the general public if the events were only attended by a specific public; the trade mark can therefore only be registered for products that are exclusively aimed at this specific public. 16] A fortiori, the mere indication that the applicant is the owner of all internet addresses in the vicinity of the trade mark applied for[17] or the mere fact that the trade mark is used by a specific customer is not sufficient to prove acquired distinctiveness. [18]
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The market share held by the trade mark may be relevant to prove, in particular, that a trade mark consisting of the appearance of the goods claimed in the application is devoid of any distinctive character because it does not deviate significantly from the norm or from what is customary in the trade. In such a case, it seems likely that the trade mark can only acquire distinctive character if, as a result of the use made of it, the goods designated by it reach a non-negligible share of the product market in question.[19]The same applies respectively to advertising expenditure.[20]
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EU law does not prohibit the question of obtaining a distinctive character through use in accordance with its national law by means of a consumer survey[21]. However, a determination based only on general and abstract information, such as certain percentages, is inadmissible.[22] Nevertheless, German case law has traditionally tended to favour examination on the basis of percentages. According to the case law of the BGH, the DPMA can even require the applicant to provide a demoscopic survey[23] if the determination of the data encounters particular difficulties.[24]
Particular difficulties arise in particular if trade mark protection is claimed for a sign that has not been used in isolation but only in combination with other design features; in such a case, the subject of the survey must be a sample of the colour and not the specific form of use together with other signs. [25] Even the framing of a colour card in a different colour can be influential and thus harmful. 26] Below a degree of distinctiveness of 50%, the BGH generally only wants to affirm the obtaining of distinctiveness in special circumstances. 27] The requirements are all the higher, the less suitable the sign is as an indication of origin according to its specific character. 28] In the case of a plainly descriptive indication such as ‘Lotto’, a degree of distinctiveness of 58% is not sufficient in any case. [29] However, to the extent that the BGH[30] demanded an ‘almost unanimous perception of the public’, this is misleading and probably too strict, as poll results reminiscent of election results in the GDR can only be achieved in practice through manipulation; the BGH has therefore since intervened to correct this and clarified that the requirements for a plainly descriptive term to be accepted by the public must not be set so high that acceptance by the public is excluded in practice. [31] In particular, for a graphically and colourfully designed word/figurative sign, such as the red/black trade mark
A
, a lower percentage of enforcement compared to the pure word mark may be sufficient for it to be enforced. 32] In general, however, such a higher percentage than 50% cannot necessarily be required for a shape of goods[33] or an abstract colour mark[34] that is enforced on the market. However, a higher percentage may also be capable of compensating for inaccuracies in the selection of the consumer groups surveyed[35]. In particular, explicit misattributions to other undertakings must be deducted[36], but not respondents who merely cannot name a specific undertaking.[37] In practice, it will nevertheless be advisable not only to submit the market survey,[38] but also to make a global submission on the relevant criteria according to the case law of the CJEU. It is particularly important to focus on the actual relevant public, so that in the area of cosmetic care products, for example, which are generally purchased by both sexes, a survey aimed exclusively at women is of little help.[39]
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The GC is rather sceptical about market surveys and takes an overall view.
In any case, survey results of less than 50% cannot easily prove obtaining a distinctive character through use.[40]
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As with the question of the inherent protectability of a trade mark, the perception of the relevant public is not necessarily the same for all categories of trade marks. It may therefore be more difficult to establish distinctiveness, including acquired distinctiveness through use, for trade marks in certain categories than for trade marks in other categories. However, the rules do not distinguish between different trade mark categories, so the requirements are basically the same.
The criteria for assessing the obtaining of distinctiveness of colour marks without contours as a result of use are therefore the same as those applicable to other categories of trade marks. It is therefore inadmissible to base the assessment of colour marks on a degree of distinctiveness of, for example, 70%.[41] The BGH assumes that an abstract colour mark does not require a degree of distinctiveness of significantly more than 50%.[42]
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In EU trade mark application proceedings, the applicant himself must submit the evidence to the EUIPO[43] to prove distinctive character acquired through use, despite the principle of official investigation that prevails there. It is in fact impossible for the Office to conduct an examination of whether the trade mark applied for has acquired distinctive character through use if the applicant does not assert this.[44]
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In the German application procedure, the applicant must invoke acquired distinctiveness and substantiate its requirements. This is also possible in appeal proceedings, but not only in appeal proceedings. Once the requirements for obtaining a distinctive character through use have been substantiated, the DPMA can carry out further official investigations; however, the burden of proof is generally on the applicant.[45]
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In invalidity proceedings, cancellation of the trade mark is out of the question if the lack of distinctive character has been overcome at the time of the decision on the application for invalidity.[46] According to recent case law of the CJEU[47], the trade mark proprietor also bears the burden of proof. This had previously been assumed by the GC.[48] In Germany, however, the BGH demanded modifications based on the principle of official investigation.[49] In cases of doubt, the trade mark could not be cancelled.[50] This practice of the BGH is obsolete.
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If the circumstance that made the trade mark distinctive subsequently ceases to exist, in particular if its well-knownness is reduced due to insufficient use after registration, the BGH is of the opinion that the subsequent loss of obtaining a distinctive character after registration of a trade mark pursuant to Section 8 III MarkenG does not justify cancellation of the trade mark due to revocation.[51] This is not tenable systematically and in view of the public interests affected and is incompatible with the TMD. According to the system of the CJEU, a trade mark that has lost its marketability is devoid of any distinctive character. In this respect, Art. 4 I TMD stipulates that signs or trade marks for which an absolute ground for refusal applies are subject to invalidation in the event of registration.

[1] GC C-136/02 P of 7 October 2004 Mag Instrument, para. 53; GC C-144/06 P of 4 October 2007 Red and white rectangular tablet with a blue oval core, para. 54; GC T-163/98 of 8 July 1999 BABY-DRY, para. 51; GC T-335/99 of 19 September 2001 Tablet for washing machines or dishwashers I, para. 62; GC T-337/99 of 19 September 2001 Tablet for washing machines or dishwashers III, ref. 62; GC T-30/00 of 19 September 2001 Tablet for washing machines or dishwashers IV, ref. 66; GC T-31/09 of 10 March 2010 LE GOMMAGES DES FACADES, ref. 40 f.
[2] CJEU C-84/17 P, C-85/17 P and C-95/17 P of 25 July 2018 Société des produits Nestlé, ref. 39 ff.
[3] CJEU C-108/97 and C-109/97 of 4 May 1999 Chiemsee, paras. 49 and 54; CJEU C-104/01 of 6 May 2003 Libertel, para. 67; CJEU C-136/02 P of 7 October 2004 Mag Instrument, para. 48; CJEU C-353/03 of 7 July 2005 Nestlé, para. 31; CJEU C-24/05 P of 22 June 2006 Storck I., ref. 22 June 2006 Storck I, ref. 71; CJEU C-217/13 of 19 June 2014 Oberbank, ref. 40; also BGH GRUR 2004, 331, 332 Westie-Kopf; BGH I ZB 61/13 of 23 October 2014 Langenscheidt-Gelb, ref. 29; BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot, ref. 93.
[4] Of course, not all criteria must be taken into account in every case: GC T-405/05 of 15 October 2008 MANPOWER, ref. 139, confirmed in result by CJEU C-553/08 P of 2 December 2009 Powerserv Personalservice.
[5] CJEU C-108/97 and C-109/97 of 4 May 1999 Chiemsee, ref. 51 ff.; CJEU C-299/99 of 18 June 2002 Philips/Remington, ref. 60 ff.; CJEU C-353/03 of 7 July 2005 Nestlé, ref. 31. 2005 Nestlé, ref. 31; CJEU C-25/05 P of 22 June 2006 Storck II, ref. 75; CJEU C-217/13 of 19 June 2014 Oberbank, ref. 41 f.; also BGH GRUR 2004, 331, 332 Westie-Kopf.
[6] CJEU C-24/05 P of 22 June 2006 Storck I, ref. 71 f.
[7] GC T-405/05 of 15 October 2008 MANPOWER, ref. 134 ff., confirmed in conclusion by CJEU C-553/08 P of 2 December 2009 Powerserv Personalservice.
[8] GC T-28/08 of 8 July 2009 Schokoriegel, ref. 57.
[9] GC T-304/16 of 14 December 2017 bet365, ref. 70 ff., confirmed in conclusion by CJEU C-136/18 P of 6 September 2018 Hansen.
[10] GC T-137/08 of 28 October 2009 Green, Yellow, ref. 45 ff., appeal to CJEU C-553/09 P withdrawn due to settlement of the parties.
[11] GC T-237/01 of 5 March 2003 BSS, ref. 55 ff.; similarly BGH I ZB 11/04 of 19 January 2006 LOTTO, ref. 16.
[12] GC T-16/02 of 3 December 2003 TDI I, ref. 60 f. and 66; also GC T-399/02 of 29 April 2004 Bottle with lime slice, ref. 50; GC T-262/04 of 15 December 2005 BIC lighter I, ref. 73 ff.; GC T-263/04 of 15 December 2005 BIC lighter II, ref. 73 ff.; GC T-230/05 of 6 March 2007 GOLF USA, ref. 69 ff.; GC T-207/06 of 14 June 2007 EUROPIG, ref. 58 ff.
[13] GC T-395/16 of 20 July 2017 Windfinder.
[14] GC T-164/06 of 12 September 2007 BASICS, ref. 49 ff.; GC T-171/13 of 2 February 2016 MOTOBI B PESARO, ref. 82; similarly GC T-351/07 of 17 December 2008 Sonnenschutzdach, ref. 47 ff.
[15] GC T-363/15 of 16 March 2016 Työhönvalmennus Valma, ref. 46.
[16] GC T-590/14 of 12 May 2016 ULTIMATE FIGHTING CHAMPIONSHIP, ref. 86 ff.
[17] BGH I ZB 72/07 of 24 April 2008 Weisse Flotte, ref. 11; also GC T-363/15 of 16 March 2016 Työhönvalmennus Valma, ref. 47.
[18] GC T-414/07 of 2 July 2009 Hand, holding a card, ref. 49.
[19] CJEU C-25/05 P of 22 June 2006 Storck II, ref. 76.
[20] CJEU C-25/05 P of 22 June 2006 Storck II, ref. 77.
[21] See Niedermann, GRUR 2006, 367; Pflüger, GRUR 2006, 818; on the special problem of work titles Berlit, GRUR 2006, 542; also Ströbele, GRUR 2008, 569.
[22] CJEU C-108/97 and C-109/97 of 4 May 1999 Chiemsee, ref. 52 ff.; CJEU C-299/99 of 18 June 2002 Philips/Remington, ref. 62; CJEU C-217/13 of 19 June 2014 Oberbank, ref. 43 f. and 48; cf. and 48; see also BGH GRUR 2004, 331, 332 Westie-Kopf; BGH I ZB 61/13 of 23 October 2014 Langenscheidt-Gelb, ref. 30; BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot, ref. 92.
[23] On the technique of questioning BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot, with subsequent constitutional complaint not accepted BVerfG 1 BvR 2160/16 of 6 December 2017 Sparkassen-Rot.
[24] BGH I ZB 24/05 of 21 February 2008 VISAGE, ref. 27 ff.; also BGH I ZB 88/07 of 9 July 2009 ROCHER-Kugel, ref. 38; BGH I ZB 65/12 of 17 October 2013 test, ref. 32.
[25] BGH I ZB 61/13 of 23 October 2014 Langenscheidt-Gelb, ref. 31; also BGH I ZR 228/12 of 18 September 2014 Gelbe Wörterbücher, ref. 47; BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot, ref. 32.
[26] BGH I ZB 65/13 of 9 July 2015 Nivea-Blau; see also BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot, ref. 38.
[27] BGH GRUR 1997, 754, 755 grey/magenta; BGH GRUR 2001, 1042, 1043 REICH UND SCHÖN; BGH I ZB 11/04 of 19.1.2006 LOTTO, ref. 20; BGH I ZR 94/04 of 20.9.2007 Kinderzeit, ref. 38; BGH I ZB 22/04 of 25.10.2007 Milchschnitte, ref. 23; BGH I ZB 24/05 of 21 February 2008 VISAGE, ref. 25; BGH I ZR 78/06 of 2 April 2009 OSTSEE-POST, ref. 31; I ZR 79/06 of 2 April 2009, ref. 35; I ZB 88/07 of 9 July 2009 ROCHER-Kugel, ref. 41; emphatically also BGH I ZB 65/12 of 17 October 2013 test, ref. 34.
[28] BGH I ZB 65/12 of 17 October 2013 test, ref. 32, with further references. N.
[29] BGH I ZB 11/04 of 19 January 2006 LOTTO, ref. 24; also BGH I ZR 94/04 of 20 September 2007 Kinderzeit, ref. 38; BGH I ZB 65/12 of 17 October 2013 test, ref. 32.
[30] BGH I ZB 11/04 of 19 January 2006 LOTTO, ref. 24; also BGH I ZR 94/04 of 20 September 2007 Kinderzeit, ref. 38.
[31] BGH I ZB 48/07 of 23 October 2008 POST II; also BGH I ZR 78/06 of 2 April 2009 OSTSEE-POST, ref. 31; I ZR 79/06 of 2 April 2009, ref. 34.
[32] BGH I ZB 94/06 of 2 April 2009 Kinder III.
[33] BGH I ZB 88/07 of 9 July 2009 ROCHER-Kugel, ref. 36 ff.
[34] BGH I ZB 65/13 of 9 July 2015 Nivea-Blau; see also BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot.
[35] BGH GRUR 2004, 331, 332 Westie-Kopf; but also BGH I ZB 11/04 of 19 January 2006 LOTTO, ref. 23 f.
[36] BGH I ZR 6/05 of 20.9.2007 Kinder II, ref. 30; BGH I ZR 94/04 of 20.9.2007 Kinderzeit, ref. 36; BGH I ZR 18/05 of 25.10.2007 TUC-Salzcracker, ref. 29; BGH I ZB 65/12 of 17.10.2013 test, ref. 36, in each case with further references.N.; also BGH I ZB 22/04 of 25 October 2007 Milchschnitte, ref. 24.
[37] BGH I ZB 94/06 of 2 April 2009 Kinder III, ref. 27, with further references. N.
[38] See also GC T-164/03 of 21 April 2005 bebe/monBeBé, ref. 76 ff. on market surveys in the collision case.
[39] BGH I ZB 24/05 of 21 February 2008 VISAGE, ref. 31 ff.
[40] GC T-289/08 of 11 February 2010 Deutsche BKK, ref. 79 ff.
[41] CJEU C-217/13 of 19 June 2014 Oberbank, ref. 45 ff.
[42] BGH I ZB 61/13 of 23 October 2014 Langenscheidt-Gelb.
[43] The referral to the GC is out of time; see below § 28 ref. 96.
[44] GC C-97/12 P of 15 May 2014 Louis Vuitton Malletier, para. 72; GC T-247/01 of 12 December 2002 ECOPY, para. 47 f.; see also GC C-238/06 P of 25 October 2007 Develey, para. 50; GC T-388/04 of 5 April 2006 Triangle, ref. 42; GC T-127/06 of 5 December 2007 Saw blade in blue colour, ref. 34 f.; GC T-289/08 of 11 February 2010 Deutsche BKK, ref. 25 f.
[45] More detailed Ströbele/Hacker/Thiering-Ströbele, § 8 para. 709 ff., with further references. N.
[46] BGH I ZB 61/13 of 23 October 2014 Langenscheidt-Gelb, ref. 57.
[47] GC C-217/13 of 19 June 2014 Oberbank, ref. 62 ff.; see also GC T-474/12 of 25 September 2014 Giorgis, ref. 56, confirmed in conclusion by GC C-531/14 P of 2 September 2015 Giorgis.
[48] See GC T-365/06 of 10 December 2008 BATEAUX MOUCHES, ref. 40 ff., confirmed in conclusion by CJEU C-78/09 P of 24 September 2009 Compagnie des bateaux muches.
[49] BGH I ZB 48/07 of 23 October 2008 POST II, ref. 31; BGH I ZB 88/07 of 9 July 2009 ROCHER-Kugel, ref. 48; BGH I ZB 65/12 of 17 October 2013 test, ref. 38; now left open by BGH I ZB 52/15 of 21 July 2016 Sparkassen-Rot, ref. 55.
[50] BGH I ZB 59/12 of 6 November 2013 Smartbook.
[51] BGHZ 156, 112 f. and 120 Kinder I; BGH I ZB 34/04 of 15 December 2005 Porsche 911, ref. 9; in conclusion also BGH I ZB 61/13 of 23 October 2014 Langenscheidt-Gelb, ref. 62.