Tuesday, 8 July 2014
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
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. Cologne
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
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.