Green light given to use of yellow for business directory services

The Regional Court of Frankfurt has struck a blow against DeTeMedien, a subsidiary company of Deutsche Telekom, by lifting injunctions imposed on the operator of the domain name 'GoYellow.com', which prevented it from using the colour yellow as a mark for its online business directory services (Cases 2-03 O 319/04 and 2-03 O 271/04, October 7 2004).

DeTeMedien provides 'yellow pages' business directory services under a yellow colour mark. It has been very successful in stopping competitors from using the colour yellow for similar services. Although the mark is not registered, the German courts have been inclined to hold that DeTeMedien's yellow colour is an unregistered trademark enjoying protection due to market penetration pursuant to Section 4(2) of the German Trademark Act. However, the Regional Court of Frankfurt's decision may go some way towards removing DeTeMedien's monopoly over the colour yellow for business directory services.

In its initial ruling, the court upheld DeTeMedien's complaint against a new competitor called GoYellow and ordered two injunctions enjoining Go Yellow from further using the colour yellow for business directory services on its website. After a later hearing, however, the court lifted the injunctions because Go Yellow had not used exactly the same colour as that used by DeTeMedien. The court held that the protection of the yellow colour for business directory services offered to DeTeMedien only prevented other parties from using the same shade of yellow.

Despite seemingly removing DeTeMedien's monopoly over the colour yellow for business directory services, the decision indicates that the court was reluctant to decide that DeTeMedien's yellow colour did not enjoy any protection as an unregistered trademark. When examined in the light of recent decisions of the Federal Supreme Court, however, the Regional Court of Frankfurt's reluctance to remove protection seems unjustified.

In 2003, the Supreme Court held that Deutsche Telekom's magenta colour should be protected as - at that time - an unregistered trademark for telecommunications services (Case I ZR 23/01, September 4 2003). The court reasoned that magenta was an unusual colour in the field of communications and thus assumed that a market penetration of 58% was sufficient to obtain an unregistered trademark. Last month, the Supreme Court ruled in another colour mark case that the use of the solid colour purple for chocolate by a competitor infringed the purple colour mark used by Kraft Foods Inc for its Milka chocolate brand. The court held that even though customers would usually not see the use of a colour on the packaging of goods as an indication of their origin (and thus as the use of a trademark), the colour purple in relation to Milka branded chocolate was so famous that customers would, as an exception, consider it as an indication of origin.

If these standards set by the Supreme Court were applied to the use of the colour yellow for communications and directory services, it would be doubtful whether it could be protected as an unregistered trademark. The Supreme Court's decisions acknowledge protection only for unusual colours used almost exclusively by a single entity. In the field of communications, the colour yellow is used by many companies, and is often seen as a symbol for postal services and communication itself.

Thus, according to the standards set by the Supreme Court, competitors would only infringe trademark rights if the alleged trademark holder could prove that the colour is unusual in its market and has an exceptionally high market penetration. Only in such circumstances would customers see the colour as an indication of origin and not, as is usually the case, simply as a part of the design of the goods or advertisements.

It remains to be seen whether the Regional Court of Frankfurt's rulings will stand up to further scrutiny.

Angelica von der Decken and Christian Paul, Beiten Burkhardt, Munich