War of Colours

Not only German savings banks (Sparkassen) must fight for their 'red'. The publishing house Langenscheidt also battled with an equally 'yellow' competitor over its house colour. Now the BGH has issued a ruling on the abstract colour mark 'yellow'.

The publishing house Langenscheidt is the proprietor of the abstractcolour mark 'yellow' registered by virtue of acquired distinctiveness through use in trade. It distributes, inter alia, bilingual dictionaries, which it has designed since 1956 in a yellow colour scheme with a blue 'L'.

A competitor distributes language learning software, which is offered in a yellow cardboard packaging. Furthermore, the competitor uses this shade of yellow accordingly also in its online presence and in advertising.

Langenscheidt is of the view that the competitor's use of the yellow shade is capable of being confused with its colour mark and asserts an infringement of its trade mark rights.

Against this, the competitor contended that it does not use the yellow shade as a trade mark for its products.

Court's Decision

The BGH ruled byjudgment of 18.09.2014 – Az. I ZR 228/12 (press release) that the yellow packaging and the yellow advertising of the language learning software company infringes the colour mark of Langenscheidt.

It thereby confirmed the view of the appellate court that there is a likelihood of confusion between the colour mark of Langenscheidt and the colour used by the competitor.

The public generally treats the use of a colour in advertising or on goods or their packaging as a design element and only exceptionally as a trade mark. However, in the domestic market for bilingual dictionaries, according to the BGH's view, colours shape the marking habits.

This extends to the market for neighbouring products, to which the language learning software of the competitor belongs, such that the public in this product sector also understands the colour 'yellow' used extensively and consistently by the language learning software company as a product identifier.

The yellow colour mark of Langenscheidt, which is registered by virtue of acquired distinctiveness through long-standing use in trade, has average distinctive character. The products distributed by the parties – dictionaries and language learning software – and the shades of yellow used by them are highly similar.

Even if the language learning software company uses itsword mark and its blue logo on its packaging and in advertising, the public perceives the yellow colour as an independent identifier. For the question of similarity of signs, therefore, the yellow shade must be examined in isolation.

Given the high degree of similarity between the goods and the signs and the average distinctive character of the plaintiff's mark, the BGH therefore holds that the prerequisites for a likelihood of confusion in trade mark law are met.

Conclusion

The colour issue will occupy the BGH under yet another aspect: the competitor had also filed an application for revocation of the Langenscheidt colour mark. Whether the revocation was rightly refused by the Federal Patent Court is a matter the BGH must examine in parallel proceedings (Az. I ZB 61/13). A decision on this matter, however, has not yet been rendered.

The EuGH already provided some guidance on the subject of colour marks a few weeks ago. Non-contoured colours could generally be protected if a large number of consumers associate a colour with a company or a trade mark. However, a blanket threshold – such as, for example, 70 percent – must not be applied, ruled the judges in Luxembourg. Further criteria for the protection of a colour mark are, according to the EuGH, also the market share, the duration of use, the geographical distribution as well as the advertising spending of the company.