Be they red, yellow or blue, courts are ever more frequently having to rule on whether a colour is capable of benefiting from trademark protection. The BGH overruled the cancellation of a colour trademark with its decision dated July 9 (I ZB 65/13).
GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London - www.grprainer.com/en conclude: The dispute before the Bundesgerichtshof (Federal Court of Justice) concerned the cancellation of a colour trademark used by a cosmetics group for its products. The cosmetics group had had the shade of blue in question registered as a trademark since 2007. The Bundespatentgericht (German Federal Patent Court) had ordered that the colour trademark be cancelled. A competitor had requested that rival firms be allowed to make use of this particular shade of colour.
The First Civil Senate of the Bundesgerichtshof, competent to hear cases pertaining, among other things, to trademark law, later set aside the Bundespatentgericht’s ruling. The Bundespatentgericht must now re-examine the case and determine to what extent consumers associate this shade of colour with a specific manufacturer. The competitor had argued that the colour had only been used “decoratively” as packaging background for the lettering, which was said to be already protected as a word trademark and was not challenged during the course of litigation.
The Bundesgerichtshof stated that abstract colour trademarks are generally not distinctive and therefore also incapable of being registered. It said that colours are in fact typically perceived as decorative elements and not as distinguishing features of products. However, in the instant case, the Court also stated that it is possible that the colour trademark in question might have established itself and thus cannot be cancelled. It held that for a trademark to have established itself as distinctive through use it was sufficient, even in cases involving abstract colour trademarks, for more than 50 per cent of the public to identify the colour as a distinguishing product feature. The Bundespatentgericht, on the other hand, was considerably stricter regarding the acquisition of distinctiveness through use for a contourless colour trademark. It stated that 75 per cent of consumers had to identify the colour as a distinguishing product feature. The Bundesgerichtshof objected to this standard on the basis that it was too strict.
Trademarks, including colour trademarks, are an important factor for businesses. The level of recognition can be attributed to trademarks. In order to prevent rival companies from sharing in the success of a trademark, it needs to be protected. Claims for damages can be asserted in the event that trademark rights are violated. Companies can turn to lawyers who are competent in the fields of trademark law and competition law to enforce and fend off claims as well as register a trademark.