Colored logos are not only very catchy to the eye, but also convey emotions through the chosen colors. Nevertheless, such logos are very often not registered as color trademarks, but only as black and white trademarks. Is the protection of such a registration sufficient to take action against the unlawful use of the actual color Trademarks?

In its ruling “BMW Emblem”, the German Federal Court of Justice (BGH) assessed the question of whether the Trademarks deposited in black and white also provide protection for the BMW emblem used in blue, white and black. The facts of the case were as follows.

In addition to the usual spare parts for cars, a spare parts dealer had also sold the typical round badges with the blue-white and silver-black BMW logo. These badges are attached to the hood or rear of the original car.

The dealer was issued warning letters by BMW for trademark infringement and requested to cease and desist and to provide information in order to claim damages. The dealer only partially responded to these demands, whereupon BMW filed a lawsuit in court. The Regional Court and the Higher Regional Court upheld the Lawsuits in their entirety. The registered Trademarks had been used identically. The claim for information and damages was therefore also justified.

The defendant filed an appeal with the BGH. In its ruling, the BGH undertook a legal reassessment of the question of use. As a result, however, it protects BMW’s claims due to the fame of its Trademarks.

In contrast to the previous instances, the BGH denied the identical trademark infringement.

A Trademarks registered in black and white is only used identically if the difference in color is so insignificant that it can escape the notice of the average consumer. Insignificant is a difference that is only noticeable to a normally attentive average consumer if he compares the Trademarks directly. In the present case, the color blue is not insignificant. On the contrary, it is decisive for the emblem. According to the BGH, the combination of the blue and white fields evokes an association with the designation of origin “Bayerische” in the name of the trademark owner. Under these circumstances, the colored badge and the registered black/white trademark are not identical within the meaning of Section 14 (2) No. 1 Trademarks Act.

However, the badge emblem is highly similar to the registered black/white mark within the meaning of Section 14 (2) No. 2 Trademarks Act. The similarity of the signs and the distinctiveness of the protected Trademarks must be taken into account. The lower court had already established without dispute that the BMW emblem is a famous trademark due to its well-known, long-standing and extensive use and has above-average distinctiveness.

Furthermore, the BGH applies the well-known principle that the Risk of Confusion can be affirmed on the basis of phonetic, visual or semantic similarity.

According to the BGH, the plaintiff’s mark is phonetically identical to the BMW badge emblem, as both contain the letter sequence BMW. Figuratively, both signs are characterized by the word element BMW, which refers to a famous car manufacturer. The (other) figurative elements of the signs are also identical. The only remaining difference lies in the color deviation due to the blue fields. However, this deviation does not lead out of the high degree of similarity, as colored reproductions are also regularly covered by the protection of similarity. There is therefore a Risk of Confusion.

The fact that this judgment was in favor of BMW is essentially due to the fact that “BMW” as a word and the emblem as an image are famous Trademarks. If, on the other hand, an ordinary trademark is filed in black and white but only used in color, this may mean that the color use does not preserve the rights of the black and white registration. In the event of a dispute, the black/white Trademarks would then be ready for cancellation due to lack of use. Caution should therefore be exercised when “generalizing” a coloured Trademarks to a black/white registration that supposedly covers all colors.

Links: juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py