Langenscheidt's (Colour) Trademark "Yellow": Germany’s Federal Court of Justice Prohibits the Use of the Colour Yellow by a Competitor of Langenscheidt’s in relation to Language-tuition Software

Nearly everyone in Germany remembers Langenscheidt’s dictionaries with their bright yellow covers from their schooldays. The colour is so characteristic that it was registered in the German trademark register as a colour trademark for ‘bilingual dictionaries in print form’ in 2010. The registration was effected on the basis of a survey conducted among potential users of bilingual dictionaries, which showed that 69% of the relevant persons perceived the colour yellow as an indication that the dictionaries were published by Langenscheidt.

The German Federal Court of Justice (“BGH”) held on 18 September 2014 (I ZR 228/12) that the registered colour trademark "yellow" was infringed by the company Rosetta Stone, which sells language-tuition software packaged in yellow cardboard boxes in Germany. The BGH confirmed the judgments of the lower courts, which had also found that there was a likelihood of confusion between Langenscheidt's trademark "yellow" and the colour used by Rosetta Stone.

Of particular relevance to the BGH was the question, whether Langenscheidt’s competitor used the colour yellow on the product packaging of its language-tuition software ‘as a trademark’. To this end, consumers would have to perceive the use of the colour as an in-dication / reference to a certain business / company, and not merely as a decorative design element, as is usually the case when colourful product packaging is used. In this specific case, the BGH arrived at its decision that the colour yellow was indeed being used as a trademark on the basis that colours are being viewed on the bilingual dictionary market as an indication / reference to the respective publisher (PONS’ dictionaries are green; Langenscheidt’s dictionaries are yellow). The BGH found that this association also extends to the market for related products, such as language-tuition software. Here, too, consumers perceive the colour "yellow" as being associated with a certain publisher.

Once this hurdle of defining the colour "yellow" as a trademark had been cleared, the remainder of the BGH’S review was a matter of mere routine. It held that the yellow colours used by the parties, as well as their products (dictionaries on the one hand, language-tuition software on the other) were very similar, that there was a likelihood of confusion, and that Langenscheidt's colour mark "yellow" was thus being infringed.

This case of infringement of an abstract colour mark shows two things: On the one hand, it is everything but easy to claim and register a colour (particularly a base colour) as trademark of a business - other familiar examples in Germany are the colour magenta used by Deutsche Telekom, and the colour purple used by Milka chocolate. On the other hand, once such protection has been secured, it is extremely valuable, given that competitors must thereupon not only refrain from using similar word trademarks or logos, but also the protected colour. It can therefore definitely be worth the time and money to make a particular colour known as an indicator for a certain company's product.