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Tuesday, 8 July 2014

Another colour trade mark dispute: Langenscheidt vs Rosetta Stone (Yellow)


Yellow
While conducting research for a case note on the recent CJEU decision in the 'Oberbank/Santander/DSVG' colourless trade mark decision (here), this Kat has come across another contourless colour trade mark dispute. This one is currently pending before the German Bundesgerichtshof (the German Federal Court of Justice, the uninitiated) and relates to the use of shades of yellow on language learning related goods and products.  Having had a look at the various media reports on the case (see e.g. here, here, here), it does promise some excitement.


Yellow too...
Background: German dictionary publisher Langenscheidt and language software publisher Rosetta Stone both use shades of yellow. Langenscheidt mostly for the covers of its bilingual dictionaries and other bilingual products, Rosetta Stone mostly for its language learning software. A conflict ensured and Langeschedit took the matter went to court, more precisely before the Higher Regional Court of Cologne (case reference 6 U 38/12 of 9 November 2012). Langenscheidt alleged trade mark infringement due to Rosetta Stone’s use of the colour yellow on the packaging of its language software, its website and its (TV) advertisements. The Cologne judges agreed and ordered an injunction of Rosetta Stone’s use of the colour yellow and declared it liable for damages and costs. From a consumer’s perspective, the court found, Langescheidt and Rosetta Stone’s products and colours were very similar. Potential buyers could therefore be confused into thinking that Rosetta Stone’s yellow branded software came from Langenscheidt. This risk was increased by the fact that that Langenscheidt’s yellow dictionaries and related language products had already been on the German market and consumers were familiar with them.

Rosetta Stone appealed this decision to the Bundesgerichtshof and also commenced separate proceedings for the cancellation of Langenscheidt’s German trade mark registration the the abstract colour yellow. This cancellation was refused by the German Patent and Trademark Office and on appeal also by the German Federal Patent Court.

It is now the Bundesgerichtshof to decide in this dispute. The decision is expected in September 2014.  This Kat would not be surprised if the Oberbank and Santander cases also ended up at the Bundesgerichtshof, but we shall wait and see.  

For our German speaking readers, the FAZ newspaper has published a (fun) colour trade mark quiz which can be accessed here.

4 comments:

MaxDrei said...

The FAZ quiz is indeed fun. But (typical journalism?) is deliberately mischievous.

It shows a bare colour square and asks whether it brings to mind any particular undertaking. Then it reminds us of the bank (SSK) and a phone company (Vodafone) that use red as their corporate colour. Or magenta (is it the chocolate company or the phone company?). If the FAZ were to tell me that the answer they are looking for is a phone company (or an oil company, or a bank) then sure I could tell from the bare colour block which firm it signifies.

I did not see anywhere from the FAZ a message to the public that marks are registered only for specified goods or services. You might just as well suggest to the public that SWAN is hopelessly ill-adapted to function as a trademark. reputable journalists writing for broadsheets should leave the public better informed,I think, not even more confused.

Incidentally, BP has changed in Germany from BP green to ARAL blue. "Green" is a specially big and overcrowded business sector in Germany. I wonder whether BP will ever do the switch in other countries.

But, Birgit, perhaps I do the FAZ wrong?

Anonymous said...

English translation of the Court's decision in Oberbank is available (see link below) and does not depart from accepted principles - not surprising since the filing date is the key date and there is, in principle, no distinction between different types of marks - not to be confused with the position in practice between different types of marks which, as the Court says, depends on the circumstances of each case. Not sure I follow what you are saying in your penultimate paragraph Birgit ? The Court's decision has to be applied by the national courts in any event..

http://curia.europa.eu/juris/document/document.jsf;jsessionid=9ea7d0f130deb3ccbea3293e405799a78a7afce41590.e34KaxiLc3eQc40LaxqMbN4OaNuRe0?text=&docid=153812&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=232578).

ron said...

While yellow is indeed a strong characteristic of the Langenscheidt dictionaries, I also associate it with the "Teach Yourself" series of foreign language books that used to be published in the UK, originally by the English Universities Press, and later in paperback by Hodder and Stoughton.

Birgit Clark said...

Max.... you are spot on. :)

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