Distinctive character of color mark can only be established in very specific circumstances

Federal Court of Justice, Decision of 19 November, I ZB 76/08

The German energy supplier Yello Strom GmbH (Yello Strom) applied for the registration of the abstract color mark yellow at the German Patent and Trademark Office (GPTO).

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Yello Strom's trademark

The GPTO and, on appeal, the Federal Patent Court refused the registration due to lack of distinctive character.

On further appeal, the Federal Court of Justice partly annulled the decision. It said that because shapeless color marks generally lacked the required distinctive character, this could only be established if there were specific circumstances, e.g. if trademark protection was only sought for very few goods or services or if the relevant market was highly specific. It required an overall assessment of all relevant factors affecting the perception of the relevant public in the relevant sector of goods or services with regard to the color.

With regard to the designated goods and service of classes 9, 37 and 38 (telecommunication), the court said that Yello Strom's trademark did not have distinctive character. In this sector the relevant public did not perceive the color of a product or service as an indication of its commercial origin. The public interest in keeping colors freely available for competitors must also be taken into consideration. In the telecommunications sector a huge number of products and services were offered by different companies. Colors were not commonly assigned to one specific market sector and therefore not used as an indication of origin.

With regard to classes 35, 36 and 42 (professional business, organizational, financial and technical services and ecological consultancy in the energy sector), the court noted that the Federal Patent Court had not substantiated its reasons sufficiently by failing to examine if the relevant public perceived colors in the sector of energy consultancy services as an indication of origin and Yello Strom's yellow color as an indication of its commercial origin. In this regard, the Federal Court of Justice therefore referred the case back to the Federal Patent Court for another examination.