Protection criteria for colour combinations clarified

The German Federal Supreme Court has clarified the conditions in which a colour combination may claim trademark protection on the grounds that it has acquired secondary meaning through use under Section 4(2) of the Trademark Act (Case I ZR 195/06, February 19 2009, only recently released).  

 

The claimant manufactured and distributed glue products under the trademark UHU. The packaging of the UHU product uses the colours yellow, black, red and white. The claimant sued the defendant for distributing identical goods under the mark PERFECT using the colours yellow, black, red and white. The claimant alleged that it had rights in any combination of the colours yellow and black in which the colour yellow is dominant.

 

The Federal Supreme Court concluded that the claimant’s colour combination could not be granted trademark protection on the grounds that it has acquired secondary meaning through use under Section 4(2) of the act, even though the claimant was a market leader in the period between 1987 and 2003, with a market share of between 72% and 89% for all-purpose glues and a market share of between 41% and 50% for superglues.  

 

The court pointed out that (unregistered) colour combinations do not fall within the scope of Section 8(1) of the act, which states that signs that are not capable of being represented graphically cannot be registered as trademarks. However, according to the court, this requirement applies only to the registration as such, as a mark must be represented graphically in the register.

 

The court thus concluded that a mark that has acquired secondary meaning through use cannot be denied trademark protection solely on the grounds that it is not capable of being represented graphically. Nevertheless, to obtain protection, a colour combination must first meet the criteria set forth in Section 3 of the act. The court held that a mark consisting of any combination of the colours yellow and black in which the colour yellow is dominant does not meet the requirements of Section 3, under which the mark must be clear and definite.

 

The claimant would have been well advised to specify the combination of the colours yellow and black in a concrete manner (including the colour of the background and word elements), as well as the proportion of each colour in the mark. The decision shows that two colours that can be used in any type of combination cannot obtain trademark protection based on secondary meaning acquired through use.