Abstract color marks are considered particularly desirable because the color itself is protected, so that the use of the mark does not depend on a specific graphic form. How broad is the protection actually in practice? In the dispute “Langenscheidt v. Rosetta/Stone”, the German Federal Court of Justice (BGH) assessed the scope of protection of an abstract color mark.

Langenscheidt is the owner of the Trademarks DE 396 12 858 “Gelb” (HKS 5) for bilingual dictionaries in print form. Langenscheidt has a market share of around 60 % in this area.

Rosetta/Stone sells language learning software and uses a yellow color on its packaging and in its advertising. Langenscheidt has filed a Lawsuit against this use for trademark infringement.

The Regional Court and the Higher Regional Court of Cologne upheld the Lawsuit and condemned Rosetta/Stone as requested. On appeal, the Federal Court of Justice (BGH) confirmed the judgment.

The BGH rejects Rosetta/Stone’s argument that it had not used the color yellow as a trademark. It is true that the use of a color in advertising or on product packaging does not normally constitute trademark use of the color. The consumer generally assumes that a color in advertising or on packaging without additional word marks or graphic elements is only a design element and not an indication of origin.

In this case, however, the special feature is that bilingual dictionaries use colors as an indicator of origin. For example, the two largest suppliers that use one color have a combined market share of almost 80 %. In the area of the goods under discussion, road users are therefore used to colors indicating the companies from which the products originate.

Rosetta/Stone has used the color yellow not only as a subordinate stylistic device alongside other design features, but “flat and consistent” for all language learning products for 33 languages as an independent trademark. The color yellow is also used as a recognition symbol in advertising and on the Internet. This color therefore has the function of a corporate color.

Therefore, the product design with the yellow shade of Rosetta/Stone is a trademarkable use. After the BGH also confirmed the high degree of similarity between “bilingual dictionaries in print form” and “language learning software” because dictionaries are an aid to language learning, it affirmed the trademark infringement.

This judgment shows that the protection of an abstract color mark goes relatively far, provided that the use of the color is perceived by the consumer as an indication of origin and not as a stylistic device.

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