A single colour can be a trademark – Telekom’s magenta, Langenscheidt’s yellow and the Sparkassen red are well-known examples. At the same time, the abstract, contourless colour mark is one of the hardest marks to obtain and to enforce. This post summarises the legal framework and the leading German case law.
What is an abstract colour mark?
A distinction must be drawn between the abstract (contourless) colour mark – protection of a colour “as such,” independent of any particular shape or arrangement – and the mere colouring of a word/figurative mark. An abstract colour mark seeks to protect the shade alone, in any use on goods, packaging or in advertising. It is precisely this detachment from any concrete form that makes registration difficult.
Legal framework
Under Section 3(1) of the German Trade Mark Act (Markengesetz, MarkenG), colours and combinations of colours are capable of being a trademark, so capacity as such is not in doubt. The hurdles lie in the absolute grounds for refusal in Section 8 MarkenG: an abstract colour regularly lacks distinctive character (Section 8(2) no. 1) and is often subject to a need to be kept free for competitors (Section 8(2) no. 2), because colours should remain available as a general design resource. These grounds can be overcome by acquired distinctiveness through use (“Verkehrsdurchsetzung,” Section 8(3) MarkenG).
As to representation: the former requirement of graphic representability was abolished in Germany by the Trade Mark Law Modernisation Act (MaMoG) with effect from January 14, 2019 (and across the EU from October 1, 2017). The colour must nevertheless be defined clearly and precisely, which in practice is done by specifying an internationally recognised colour code (such as RAL, Pantone or HKS).
The EU-law foundations were laid early by the Court of Justice of the European Union. In Libertel (judgment of May 6, 2003, C-104/01) the Court held that a colour as such can in principle be a trademark, but normally lacks inherent distinctive character, and that there is a public interest in not unduly restricting the availability of colours. For colour combinations, Heidelberger Bauchemie (judgment of June 24, 2004, C-49/02) required a systematic arrangement associating the colours in a predetermined and uniform way.
The basic rule: abstract colours are rarely inherently distinctive
In line with the CJEU, the German courts assume that the public usually perceives a colour as a decorative element rather than as an indication of commercial origin. An abstract colour mark therefore possesses inherent distinctive character only exceptionally – for instance where the goods or services claimed are very specific, the relevant market is narrowly defined, and the use of colours is unusual there. As a rule, the route to a registrable colour mark therefore runs through acquired distinctiveness.
The leading decisions of the Federal Court of Justice (BGH)
Langenscheidt Yellow (2014)
The current line of authority opened with the yellow of the dictionary publishers. In infringement proceedings, the BGH held that a competitor’s yellow packaging (language-learning software) infringed the abstract colour mark “yellow” registered for Langenscheidt (judgment of September 18, 2014, I ZR 228/12). In the parallel cancellation proceedings, the BGH confirmed the validity of the mark and dismissed the cancellation request (order of October 23, 2014, I ZB 61/13 – “Langenscheidt-Gelb,” GRUR 2015, 581). It was thus settled that an abstract colour, where it has acquired distinctiveness, can be protected as a mark and enforced against third parties.
Nivea Blue (2015)
In the dispute over Beiersdorf’s blue (Pantone 280 C), the BGH set aside the cancellation ordered by the Federal Patent Court and referred the case back (order of July 9, 2015, I ZB 65/13 – “Nivea-Blau”). The decision contains the standard that is central in practice: abstract colour marks are generally not inherently distinctive, but can acquire distinctiveness through use; for that, as with other types of mark, a recognition level of more than 50 % suffices. The BGH rejected as too strict the 75 % threshold the Federal Patent Court had applied. At the same time, it set demanding requirements for the methodology of consumer surveys and dismissed the survey submitted as flawed (respondents had been shown a blue colour card with a white border, which may have skewed the results in the proprietor’s favour). After referral back and a limitation of the mark to certain product groups, the competitor withdrew its cancellation request; the Federal Patent Court confirmed that the mark remained on the register (decision served on October 18, 2019). The Nivea blue is therefore still protected.
Sparkassen Red (2014–2016)
The best-known case concerned the red (HKS 13) of the umbrella association of the German savings banks (Sparkassen-Finanzgruppe), registered for retail banking. On a reference from the Federal Patent Court, the CJEU first clarified that acquired distinctiveness does not turn on rigid percentage figures but on an overall assessment (judgment of June 19, 2014, C-217/13 and C-218/13). After the Federal Patent Court nonetheless ordered cancellation (order of July 8, 2015, 25 W (pat) 13/14), the BGH set that aside and kept the mark on the register (order of July 21, 2016, I ZB 52/15 – “Sparkassen-Rot,” BGHZ 211, 268).
The decision brought two important clarifications. First, the BGH confirmed the principle that inherent distinctiveness is lacking, but that it had here been overcome by acquired distinctiveness. Second, for cancellation proceedings it took the decisive point in time to be the decision on the cancellation request: even a colour mark that may originally have been registered wrongly – for want of proven acquired distinctiveness – remains protected if it had acquired such distinctiveness by that later date (Section 50(2) sentence 1 MarkenG). What mattered was a recognition level above 50 %, supported by consumer surveys and further circumstances. In the accompanying infringement dispute against the Spanish Santander group, the BGH had earlier set aside an interim judgment and referred the matter back (judgment of September 23, 2015, GRUR 2015, 1201).
A recent confirmation: NJW Orange (2021)
That the line continues is shown by the decision “NJW-Orange” (BGH, GRUR 2021, 1526) on the abstract colour mark “orange” of a legal journal. The BGH reaffirmed the principles from “Sparkassen-Rot” and again refined the requirements for consumer surveys – for example, that the response option “looks familiar” must not be actively offered but only recorded if mentioned spontaneously, and that where a colour has only ever been used in combination with other elements it is hard to prove that the colour as such has become established.
Proving acquired distinctiveness
In practice, acquired distinctiveness is demonstrated above all through a methodologically sound consumer survey; the German Patent and Trade Mark Office (DPMA) has published guidance on this. As a rule, more than 50 % of the relevant public must perceive the colour as an indication of origin. Supporting factors include market share, the intensity, geographical spread and duration of use, advertising expenditure, and declarations from chambers of industry and commerce and trade associations. Particular difficulties arise where the colour has never been used in isolation but always together with word or figurative elements – in that case the evidence will often establish only that the specific overall design has become established, not the colour as such.
Practical tips for applying for an abstract colour mark
- Define the colour unambiguously by means of a recognised colour code (RAL, Pantone, HKS).
- Maintain a consistent corporate design over many years – the colour actually used should match the colour applied for exactly.
- Keep the list of goods/services narrow and specific; a clearly defined market improves the prospects of success.
- Commission a consumer survey in line with the DPMA’s requirements early, and document use and market data.
- Where possible, use the colour in isolation (not only together with a logo or word mark) so that the distinctiveness of the colour as such can be proved.
Conclusion
Abstract colour marks are protectable in Germany – but they are “earned” marks: the route almost always runs through acquired distinctiveness, with a high evidentiary bar. For established brands that have used a house colour consistently over many years, the effort can nonetheless pay off, as the decisions on Langenscheidt yellow, Nivea blue and Sparkassen red show: once a colour has been registered and has acquired distinctiveness, its non-decorative use by competitors can be effectively prohibited.
