Kärcher successfully enforces its abstract colour trade mark

Decisions on the enforcement of abstract colour trade marks are rather rare. This is certainly due to the fact that obtaining protection for such marks is not easy in the first place. Colours are generally considered not to be inherently distinctive. As a consequence, trade mark protection for single colours or colour combinations is limited to well-known colours that have acquired distinctiveness through use. Once acquired distinctiveness is successfully established, enforcing colour marks can be straightforward, as a recent decision concerning the ‘Kärcher yellow’ for high-pressure cleaners shows.

Background

Kärcher produces and sells high pressure cleaners for private and commercial applications. The predominant colour applied to these goods is yellow, e.g. as follows:

 

Kärcher owns the German abstract colour trade mark no. 305255835 for ‘zinc yellow’ (RAL 1018):

The trade mark was registered in 2005 on the basis of acquired distinctiveness for ‘motor-driven cleaning devices that work with a high-pressure water jet; the aforementioned devices for use outside the home’ in class 7.

The defendants are an Italian company and its German subsidiary. They offered, inter alia, the following high-pressure cleaners in Germany:

Kärcher filed a trade mark infringement action before the District Court of Hamburg, which was successful. The defendants appealed to the Higher Regional Court of Hamburg.

The Higher Regional Court’s decision

The Higher Regional Court of Hamburg dismissed the appeal (5 U 32/23). It confirmed that there was a likelihood of confusion.

1. Genuine use

The defendants disputed that Kärcher had been using its colour trade mark genuinely. The main question was whether the colour would be perceived as an indication of the commercial origin.

Kärcher had submitted three surveys from 2005, 2018 and 2022. They showed that more than 50 % of the general public perceived the colour as a trade mark. In line with the case law of the German Supreme Court, the judges considered this to be sufficient to establish that the colour had been used as a source indicator and not just merely in a decorative way.

The fact that Kärcher’s products also had parts in black and grey was deemed irrelevant. Black and grey were found to be typical colours used by other manufacturers of high-pressure cleaners and consumers would not understand them as indications of the commercial origin.

2. Infringing use as a trade mark

Turning to the question whether the colour yellow on the defendants’ goods affected the origin function of Kärcher’s trade mark, the Court held that the colour would be perceived as a source indicator.

The judges considered that:

a. Consumers were used to the yellow colour of Kärcher being an indication of the commercial origin for high-pressure cleaners. This had been established through the surveys. Consumers attributed the colour to Kärcher.

b. The colour was well-known as established by the surveys.

c. The predominant colour on the defendants’ products was yellow. It was an important design feature of the cleaners.

d. The defendants’ yellow colour was at least highly similar to Kärcher’s trade mark.

e. The colours black and grey on the contested goods were deemed irrelevant for the same reasons as on Kärcher’s goods. They were typical colours used by other manufacturers and did not indicate the commercial origin.

f. The use of the word mark ‘Lavor’ on the cleaners did not prevent the colour yellow from being perceived as a separate indication of origin.

3. Likelihood of confusion

The judges considered Kärcher’s trade mark to have an at least average degree of distinctiveness. The question whether the level of distinctiveness was increased due to extensive use was not deemed decisive.

With respect to the similarity of the signs, the colours could be compared in isolation because they would be perceived as indications of origin on their own.

The colours were considered to be highly similar, if not identical. The average consumers had to rely on their imperfect recollection. Small differences in the colours would not be noticed because consumers were deemed not to be able to remember and distinguish a broad range of colours. Differences could only be remembered if the colours were obviously and clearly distinguishable from each other.

Considering that the goods were identical, the judges confirmed a likelihood of confusion to exist.

4. No forfeiture

The defendants argued that they had sold their goods since 2000. Infringement claims of Kärcher were, therefore, forfeited under the general principle of good faith in German law (Sec. 242 German Civil Code).

The Court disagreed. Apart from the fact that it was not proven that the defendants’ cleaners had a yellow colour since the year 2000, the defendants did not establish the requirements for forfeiture under German law to the satisfaction of the judges.

Comment

The key takeaways:

1. Colours (like any other trade mark) need not be used in isolation for the use to be considered (1) genuine use to preserve and enforce the trade mark rights and (2) infringing. The use of additional colours is acceptable if they are common in the relevant sector.

2. Surveys on the perception of the colours as indications of the commercial origin of the goods are the best piece of evidence to establish both genuine and infringing use of a (highly) similar colour.

The first picture is by Kärcher.