BGH decision "Yellow dictionary" colour trade mark dispute

The German Federal Court of Justice (Bundesgerichtshof, short: BGH) has now published the full grounds (in German) of its recent decision in the "yellow dictionary" trade mark dispute between German publishing house Langenscheidt and RosettaStone (case reference I ZR 2284/12 “Gelbe Wörterbücher” of 18 September 2014); please recent IPKat report here.  In its decision the BGH found that the yellow product packaging and advertisements used by RosettaStone, a business which distributes language learning software, infringes the colour trade mark owned and extensively used by Langenscheidt.

Yellow

What had happened? German dictionary publisher Langenscheidt and language software publisher Rosetta Stone both used different but similar shades of yellow on their products: Langenscheidt mostly for the covers of its bilingual dictionaries, Rosetta Stone mostly for its language learning software.  A conflict ensued and Langenscheidt took the matter to court, alleging trade mark infringement under § 14 (2) No. 2 German Trademark Act. The lower courts agreed (Landgericht of Cologne, case reference 31 O 352/11 of 19 January 2012 and Oberlandesgericht Cologne, case reference 6 U 38/12 of 9 November 2012). They ordered an injunction of Rosetta Stone’s use of the colour yellow and declared it liable for damages and costs. 

Rosetta appealed and applied for a cancellation of Langescheidt’s colour trade mark at the German Trade Mark & Patent Office. Unsuccessful in the first and second instances, this action is currently also pending at the BGH but has so far not been decided; (case reference I ZB 61/13).  The oral hearing in this case is scheduled for tomorrow….

Decision: in its only 60 paragraphs long decision the BGH confirmed the lower courts’ decisions and held that there was likelihood of confusion under § 14 (2) No. 2 German Trademark Act.

The BGH’s headnotes neatly summarise this concise  decision (Kat translation):

(a) A suspension of a trade mark infringement court proceedings with regard to a pending cancellation action against the trade mark on which the infringement proceedings are based will usually not be allowed, where there no utmost probability (“keine überwiegende Wahrscheinlichkeit”) of success in the cancellation proceedings.

(b) A heightened degree of distinctiveness of an abstract colour trade mark is not a necessary prerequisite for an assumption of trade mark use of the colour use objected to.

(c) There is a high product similarity between language learning software and bilingual  dictionaries.

(d) Where consumers regard a colour used on product packaging as a (secondary) sign and not as part of a combined sign, then the colour has to be the basis of a isolated comparison of similarity of the signs.

In more detail:  the BGH decided against a suspension of the infringement proceedings pending the outcome of Rosetta Stones’ cancellation action against Langescheidt’s mark because “its outcome was still uncertain”.  The BGH also found that Rosetta’s use of the colour yellow was “use as a trade mark” but acknowledged that consumers tend to view the use of a colour on products, packaging and advertisements as an ornamental embellishment and would only “in exceptional cases” interpret it as trade mark use. Nonetheless, the German market for bilingual dictionaries was strongly influenced by the use of colours functioning as indicators of trade origin. This not only affected related products, including Rosetta’s language learning software, but also meant that consumers would regard the Rosetta’s extensive use of the colour yellow in its market segment as a sign indicating trade origin. Langenscheidt’s registered colour trade mark had acquired an “average of degree of distinctiveness” due to its long term use.  



Also yellow

Referring in much detail to the CJEU’s recent decisions in the Specsavers (C-252/12) and the Oberbank and Santander cases (joined cases C-217/13, C-218/13), the BGH found a likelihood of confusion. The judges held that the claimant’s and defendant’s goods (bilingual dictionaries vs. language learning software) were very similar: stating that a dictionary was a “helpful and indispensable aid” when learning a language. Furthermore, the shades of yellow used by both parties were highly similar. Even though the defendant had also used its word mark “RosettaStone” and blue stone logo on its products and in advertisements, in an overall impression consumers would nonetheless regard the use of colour as an independent sign so that any comparison of the signs had to focus on the colour in isolation. Overall, and bearing in mind the average degree of distinctiveness of the claimant’s yellow colour trade mark and given the high degree of similarity between both, the signs and the goods, a likelihood of confusion could not be excluded.  



The issue of ‘trade marks and colour’ has been discussed in several recent CJEU decisions, notably Specsavers, Oberbank and Santander cases and is in the centre of OHIM’s recent “Common Communication on the Common Practice of the Scope of Protection of Black and White Marks” of 15 April 2014. The BGH’s decision contributes illustrates that consumer habits and market practices can have a strong impact on the assessment of likelihood of confusion.  It will be interesting to see what the BGH decides in RosettaStone’s cancellation action ...