Colorful trademark law – the obstacles in registering colour trademarks

1. Preliminary remarks

From a German as well as a European point of view, an abstract colour mark does not only comprise the registration of a single specific shade of colour for one or more goods or services, but also the registration of certain colour combinations without a specific contour, shape or design (see German Federal Patent Court“GFPC”, order of 15 December 2021, case no. 29W (pat) 572/19 – Weißes k auf rotem Grund; Fezer/Fesenmair, MarkenR, 5^th edition 2023, § 8 MarkenG Rn. 126; BeckOK/Schumacher, MarkenR, 38^th edition,1 April 2024, § 8 MarkenG Rn. 449; EUIPO, Trademark Guidelines, Part B, Section 4, Chapter 2.2.4 – Colour marks).

The fact that these types of signs can be protected under trademark law is nowadays undisputed and expressly stipulated by law. For Germany, Section 3 (1) MarkenG, and for the European Union, Article 4 of the EUTMR and Article 3 of the Trademark Directive expressly refer to the general registrability of abstract colour marks.

2. German colour marks

The registration of abstract colours or colour combinations nevertheless presents applicants with a number of obstacles. At least since the ECJ's landmark decision in the ‘Libertel’ case, the registration of abstract colours or colour combinations as originally distinctive trademarks is only possible within a very narrow framework (see ECJ, judgment of 6 May 2003, case no. C-104/01– Libertel).

According to the ECJ, the consumer is not accustomed to recognising an indication of origin in colours, as the use of colours as a trademark is not a common practice on the market. Furthermore, the consumer can only distinguish a limited number of colours or colour gradations, which is why a colour is inherently less apt to serve as a badge of origin (see ECJ, judgment of 6 May 2003, case no. C-104/01 – Libertel). Abstract colours and colour combinations therefore generally lack the minimum degree of distinctiveness required for registration as a trademark (see also ECJ, judgment of 25 June2004, case no. C-49/02 – HeidelbergerBauchemie GmbH; ECJ, judgment of 21 October 2004, case no. C-447/02 P– Farbe Orange).

Furthermore, the ECJ recognises a considerable public interest in the free availability of colours. For if there is only a comparatively small number of colours that consumers can actually distinguish from one another, then – if the registration of colours as trademarks were allowed without further requirements – there would be a considerable risk of a monopolisation of colours by individual companies. After all, the entire available colour spectrum could then be withdrawn from free use with just a few trademark registrations (see ECJ, judgment of 6 May 2003, case no. C-104/01 – Libertel; ECJ, judgment of 25 June 2004, case no. C-49/02 – Heidelberger Bauchemie GmbH; ECJ, judgment of 27 March 2019, case no. C-587/17 – Hartwall).

The German courts have endorsed this view (vgl. German Federal Court of Justice “GFCJ”, order of 19 November 2009, case no. I ZB 76/08 – Farbe Gelb; GFCJ, order of 21 July 2016, case no. I ZB 52/15 – Sparkassen-Rot; GFPC, order of 26 February 2020, case no. 29 W (pat) 24/17 – Farbmarke Orange; GFPC, order of 23 June 2022, case no. 30 W (pat) 517/20 – Farbkombination orange hellgrau).

Accordingly, the registration of abstract colour marks will generally be rejected due to alack of inherent distinctiveness. Only if the applicant can invoke exceptional circumstances, an application for a colour mark might be eligible for registration on the basis of inherent distinctiveness. Such circumstances could be if the mark concerns a very narrow specific market and only a few goods or services, if the use of colours in the relevant market is generally unusual or at least the colour applied for is unusual, or if the public is accustomed to the use of colours as a means of identification due to a long-term practice on the market (see GFPC, order of 26 January 2005, case no. 32 W (pat) 353/03 – Farbmarke gelb; GFPC, order of 10 June 2010, case no. 30 W (pat) 78/09 – Transparent grün; GFPC, order of 23 June 2022, case no. 30 W (pat) 517/20 – Farbkombination orange hellgrau). However, these conditions do not have to be met cumulatively (see GFCJ, order of 9 July 2015, case no. I ZB 65/13 – Nivea-Blau).

The following markets, among others, have been cited in German case law as examples of sufficiently specific markets:

• Market for dishwashers (see GFPC, order of 14 October 2005, case no. 29 W (pat) 68/03 – zweifarbige KombinationDunkelblau/Hellblau);
• Market for bilingual dictionaries (see GFPC, order of 5 August 2013, case no. 29 W (pat) 90/12 – Farbmarke gelb);
• Petrol station market (see GFPC, order of 16 May 2012, case no. 28 W (pat) 11/11 – Farbe Blau);
• Market for household power cables (see GFPC, order of 23 June 2022, case no. 30 W (pat) 517/20 – Farbkombination orange hellgrau).

Of course, as with all other types of trademarks, colours that are descriptive for the goods or services in question are excluded from registration in accordance with Section 8 (2) No. 2 MarkenG. This is likely to be the case with regard to the colour ‘yellow’ for honey products or the colour ‘purple’ for lavender products. Furthermore, classic signal colours are also likely to lack the necessary distinctiveness, as the public will not take any indication of origin from them, but merely a specific warning or alert (see e.g. for “red”: GFPC, order of 8 July 2015, case no. 25 W (pat) 13/14 – Sparkassen-Rot II; GFPC, order of 23 October 2014, case no. 30 W (pat) 505/14 – Farbe RAL 3020 (rot)).

In view of the extremely narrow framework for the registration of abstract colour marks on the basis of inherent distinctiveness, the more usually more important way to have such a mark registered is by claiming acquired distinctiveness through use (Section 8 (3) MarkenG).

The question whether a trademark has acquired distinctiveness through use in the relevant public must be assessed on the basis of an overall assessment of the factors which may show that the trademark has acquired the capacity to identify the goods or services in question as originating from an undertaking and thus to distinguish those goods or services from the goods or services of other undertakings (see ECJ, judgment of 4 May 1999, case no. C-108/97 and C-109/97 – Chiemsee; GFCJ, order of 19 January 2006, case no. I ZB 11/04 – LOTTO;GFCJ, judgment of 22 September 2016, case no. I ZB 52/15 – Sparkassen-Rot).

These factors may include the market share held by the trademark, the intensity, the geographical scope, the duration of use of the trademark, the company's advertising efforts for the trademark and statements by chambers of industry, chambers of commerce and other professional organisations (see ECJ, judgment of 4 May 1999, case no. C-108/97 and C-109/97 – Chiemsee; GFCJ, order of 21 February 2008, case no. I ZB 24/05– VISAGE; GFCJ, judgment of 22 September 2016, case no. I ZB 52/15– Sparkassen-Rot).

Furthermore, the German courts usually still require the submission of a demoscopic expert opinion as proof of acquired distinctiveness (see GFCJ, order of 17 October 2013,Az. I ZB 65/12 – test; GFCJ, judgment of 22 September 2016, case no. I ZB 52/15 – Sparkassen-Rot) and, unless special circumstances require a different conclusion, usually assume an acquired distinctiveness where at least 50 % of the public recognises the sign as a trademark (see GFCJ, order of 17 October 2013, case no. I ZB 65/12 – test; GFCJ, order of 2 April 2009, case no. I ZB 94/06 – Kinder III; GFCJ, order of 9 July 2009, case no. I ZB 88/07 – ROCHER-Kugel; Regional Court of Cologne, judgment of 13 March 2019, case no. 84 O 238/18 – Trinkpacks). 

These requirements apply to the same extent to colour marks (see GFCJ, order of 23 October 2014, case no.IZB61/13 – Langenscheidt Gelb; GFCJ, order of 9 July 2015, case no.IZB65/13 – Nivea-Blau).

3. European Union colour marks

Of course, EU trademark law also recognises abstract colour marks, namely in Art. 4 EUTMR and Art. 3 of the Trademark Directive.

As trademark law is harmonised law, the above statements on the registrability of German colour marks also apply to a large extent to EU colour marks, in particular with regard to the usual lack of inherent distinctiveness of this type of mark. Thus, here too, registration asa result of inherent distinctiveness will only be considered under exceptional circumstances, such as a very specific market and a very limited number of goods and services (see ECJ, judgment of 6 May 2003, case no. C-104/01– Libertel; GC, order of 4 May 2023, case no. T-618/22 – Kombination aus Grün und Orange).

Differences to German case-law exist above all with regard to the question of when colour marks have acquired distinctiveness in the eyes of the public. This is because, unlike German case-law, the ECJ avoids requiring a certain percentage for the assumption of acquired distinctiveness (see ECJ, judgment of 4 May 1999, case no. C-108/97 and C-109/97 – Chiemsee). Rather, it shall suffice if the global assessment of all the evidence shows that at least a significant part of the relevant public recognises the goods or services concerned as originating from a particular undertaking on the basis of the trademark (see ECJ, judgment of 4 May 1999, case no. C-108/97 and C-109/97 – Chiemsee; GC, judgment of 15 December 2005, case no. T-262/04 – Briquet à pierre; EUIPO, Trademark Guidelines, Part B, Section 4, Chapter 14.7 – Standard of proof).

Nevertheless, proving that a trademark has acquired distinctiveness in the European Union is likely to pose greater difficulties for the applicant than for the applicant of a German trademark. This is because, according to the case-law of the ECJ, acquired distinctiveness must be proven for each and every Member State of the European Union (see ECJ, judgment of 25 July 2018, case no. C-84/17 P,C-85/17 P and C-95/17 P – KitKat 4 Finger).

Such separate evidence for each individual Member State shall only be superfluous if the evidence submitted is of equal value for several Member States at the same time. This may be the case, for example, where, with regard to certain goods or services, several Member States have been grouped together in a distribution network and treated as if they constituted a single and homogeneous national market (see ECJ, judgment of 25 July 2018, case no. C-84/17 P, C-85/17 P and C-95/17 P – KitKat 4 Finger).

This may facilitate the proof with respect to some Member States. Still, it remains the case that acquired distinctiveness has to be proven with respect to the entire territory of the European Union.

4. Conclusion for your company

If you are considering applying for an color mark, be it a German or an European Union mark, you should not ignore the following points:

• Have you defined the list of goods and services as narrowly as possible?
• Is the market on which you want to use the trademark a sufficiently specific market?
• Is the use of colours to identify goods or services unusual on this market, or is the colour or combination of colours you have chosen unusual on this market?
• Is the public on the market perhaps accustomed to colours being used as badges of origins?
• Is your trademark not descriptive of the goods or services for which protection is sought?
• Has your mark perhaps already acquired distinctiveness on the relevant territory asa result of its use?

We will of course be happy to assist you with all these questions. Please contact us.

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