Protect colour marks
The obstacle in the protection of colour marks
Since 1995, colours and colour combinations (§ 3 Abs. 1 MarkenG) can be registered as trademarks at the German Patent and Trademark Office (GPTO) and are therefore legally protected.
In the case of colour marks, the distinctive character required for straight registration is only assumed under particularly exceptional circumstances, e.g. if the colour shall only be registered concerning a very limited number of goods or services , the relevant market is very specific, the public has become accustomed to colours as a means of identification on this market, or the colour stands out in the context of all other elements in such a way that the target public (immediately) understands it as a distinctive sign.
Acceptance of the mark
If there is no original distinctive character, protectability can be achieved through use, whereby use as a trademark is required with a high degree of recognition (e.g. greater than 50%), so-called acquired distinctiveness. The premise in this respect is that the colour is therefore not merely understood by the public as a descriptive indication or decoration. As a rule, obtaining evidence for an acquired distinctiveness is very time-consuming. In addition to documents on the intensity of use, the geographical distribution, the duration of use or the associated advertising expenditure, a market analysis based on a consumer survey is often required. This is obviously very costly, too.
Nevertheless, it is important for various companies to secure abstract colour trademark protection. Well-known examples are Telekom magenta, ADAC yellow, Beiersdorf Nivea blue or Deutsche Post yellow.
The protection of a trademark is initially valid for 10 years. However, a trademark can be protected for an indefinite period; provided that the trademark owner pays a renewal fee every 10 years.
The dispute about registered colour marks
Frequently, questions as to whether colour marks are valid, whether existing property rights are infringed, or whether an application for cancellation of a colour mark by a third party should be granted are intensively discussed in proceedings at German Civil Courts, the Federal Patent Court and also the Federal Court of Justice.
As a firm in Düsseldorf specialized in patent and trademark law, we advise our clients on all aspects of the protection and enforcement of all kinds of trademarks.
Regarding Matthias Rößler:
Matthias Rößler, German and European Patent Attorney since 2003, studied mechanical engineering at the RWTH Aachen. He is co-founding partner of karo IP. A main focus of his practice is the management of large patent portfolios and the enforcement of bilateral litigation proceedings before patent offices and patent courts. His additional qualification as Master of Laws (LL.M.) qualifies him especially for multinational infringement matters in Europe.