Only limited protection for YELLO mark, rules Supreme Court


In Yello Strom Verwaltungsgesellschaft mbH v Yellow Access AG (Case 4C.258/2004, October 6 2004), the Supreme Court has upheld a decision to dismiss the plaintiff's cancellation action against the defendant's YELLOW ACCESS AG (and device) mark. The court noted that the plaintiff's own YELLO mark for similar goods and services was relatively weak, meriting only limited protection.

Yello Strom Verwaltungsgesellschaft mbH, headquartered in Germany, applied to cancel Swiss company Yellow Access AG's YELLOW ACCESS AG (and device) mark for computer software and telecommunication-related services based on its prior registered YELLO mark for similar goods and services. The lower courts dismissed the claim and Yello appealed to the Supreme Court.

The court noted that the criteria for assessing whether two trademarks are confusingly similar are higher if the marks are registered for the same type of products or services. Notwithstanding these higher criteria, the court held that the two marks were not confusingly similar and dismissed Yello's appeal.

It stated that both marks were derived from the English adjective 'yellow'. Although the word 'yellow' was not descriptive of the relevant goods and services since these could not be said to have a particular colour, it belongs in the public domain and cannot be monopolized. This meant that both marks were weak and merited only limited protection. The court also held that the parties' customers would pay a considerable degree of attention when purchasing or using their goods and services. These factors eliminated any likelihood of confusion.

One might suspect that the decision would not have been the same if a different colour, such as pink, had been at stake. Yellow is a common designation for postal (and, perhaps by extension, telecommunications) services. It is therefore a weak sign in this area.

Peter Heinrich, Lenz & Staehelin, Zurich

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