Color mark „yellow“: Langenscheidt wins in trademark dispute

The German Federal Supreme Court decided that only Langenscheidt is allowed to use the color yellow for language training products in Germany (Judgment dated 18 September 2014; I ZR 228/12). Background of the Case and Subject Matter The German publisher Langenscheidt has been selling dictionaries since 1956 and other language learning products since 1986. All the products are designed in yellow color with a blue “L” on the books (see left below). Langenscheidt also uses the color yellow extensively when advertising its product. The software company Rosetta Stone has been offering learning software in 33 languages in Germany since April 2010 – and advertises it in yellow with black lettering and a blue logo (see right below). Rosetta Stone also uses the color yellow for its website, in advertising and on packaging. Langenscheidt was of the opinion that this is a violation of its trademark rights and successfully sued the competitors at the Higher Regional Court of Cologne on omission and damages. Rosetta Stone appealed this decision. Decision The German Federal Supreme Court confirmed the decision of the Higher Regional Court of Cologne. Normally, consumers view colors as mere design or ornamental features. But, the decision is based on the fact that the German market for dictionaries is strongly influenced by colors. Therefore, consumers recognize the predominant use of a color as an indication of the origin of a product. This usage also spreads to neighboring market segments, including language learning software. The yellow color of Langenscheidt has acquired an average degree of distinctiveness through its long and intensive use. Rosetta Stone’s yellow color is very similar to it. Therefore, likelihood of confusion is given. The court held that under the particular circumstances in which the colors have been used, the relevant public recognizes them as individually distinctive signs.