Trademark dispute over Orange: Federal Patent Court invalidates colour mark of DIY retail giant

The colour orange was at the centre of a much-publicised legal dispute between major DIY retail chains. The Federal Patent Court has now decided: it is not possible to obtain trademark protection by monopolising the colour shade RAL 2008 for retail services in the construction and DIY sector.

Trade mark with signal effect – but is it sufficient for protection?

The trade mark proprietor, a nationally leading DIY retail company, had already registered the colour "Orange (RAL 2008)" as an abstract colour mark with the German Patent and Trade Mark Office (DPMA) in 2012. The registration was based on alleged acquired distinctiveness through use, that is, the assumption that the relevant circles of the trade associated the colour shade exclusively with this company. The mark was registered for "retail services in the field of construction and DIY articles".

Two competitors felt their commercial freedom of action was hindered and applied for the cancellation of the mark. They argued that the colour orange was customary throughout the industry and should therefore not be monopolised, particularly since they themselves had been using similar colour shades for their corporate identity for decades. They further contended that the application was filed in bad faith and was abusive, intended to deliberately obstruct competitors.

Lack of distinctive character as the core problem

The Federal Patent Court upheld the applications. In the court's view, the colour orange lacked distinctive character within the meaning of the Trade Mark Act at the time of filing. It had long been in widespread use by various providers in the relevant market environment – retail of construction and DIY articles – and therefore was not inherently suitable to indicate only one undertaking. In particular, it could not be assumed that consumers would associate a particular colour with a specific provider if that colour was being used by competitors with similar intensity.

A substantial argument against the capacity to be protected as a mark was the methodologically deficient traffic survey report that led to the registration of the mark. The trade mark proprietor was unable to provide convincing evidence that the colour was understood as an indication of origin within the meaning of trade mark law at the time of filing. The criticised methodological deficiencies related, for instance, to the selection of the consumers surveyed, the wording of the questions and the method of colour presentation in the survey.

Second survey did not bring about a change

In the course of the appeal proceedings, the trade mark proprietor filed a new traffic survey report that was intended to demonstrate current acquired distinctiveness. This yielded higher recognition rates, partly exceeding the critical threshold of 50 %. However, this new report did not fully convince the court either. When viewed in conjunction with further arguments and evidence, the court found that even at the time of its decision, there was no sufficient acquired distinctiveness.

Moreover, the court emphasised that the colour shade was not being used in a manner that could clearly be understood as use as a trade mark. Rather, the colour served predominantly decorative purposes or appeared only in connection with other trade mark-protected signs – such as logos or lettering. However, a mere combination with other signs could not constitute independent use as a trade mark of an abstract colour mark.

What does the decision mean for trade mark practice?

The decision of the Federal Patent Court illustrates the high barriers for the protection of abstract colour marks. Colours, in particular those with industry relevance, are subject to significant needs for freedom of use. Undertakings that nevertheless wish to protect a colour as a mark must demonstrate not only that consumers associate the colour shade with their undertaking. They must also clearly show that this association already existed at the time of filing the trade mark application and that the colour is actually used as a trade mark, that is, to distinguish the goods or services claimed.

Traffic surveys must meet the highest methodological standards and must contain no suggestive elements. Moreover, long-standing use or a strong market position alone is not sufficient to compensate for a lack of distinctive character. What is decisive is how consumers actually perceive the colour – not how the undertaking intends it to be perceived.

For undertakings with trade mark ambitions in the field of abstract colour marks, this decision is a clear warning: the requirements are strict, the chances of success are limited, particularly in markets with strong colour competition density.

Conclusion:

The decision on the cancellation of the colour mark Orange (RAL 2008) provides greater clarity in the complex interplay between acquired distinctiveness through use, trade mark use and industry custom. Undertakings wishing to protect abstract trade mark forms such as colours must prepare for detailed and court-proof evidence, ideally through substantive consumer surveys, documented use as a trade mark and a consistent brand strategy. It must always be borne in mind that the threshold for acquired distinctiveness is not crossed by market leadership or advertising alone, but by the actual understanding of consumers.

As experienced lawyers, we support you in the field of trade mark law in developing, registering, defending or challenging your trade marks – strategically, legally sound and individually tailored to your market and competitive situation.