Another colour trade mark dispute: Langenscheidt vs Rosetta Stone (Yellow)

Yellow

While conducting research for a case note on the recent CJEU decision in the 'Oberbank/Santander/DSVG' colourless trade mark decision (here), this Kat has come across another contourless colour trade mark dispute. This one is currently pending before the German Bundesgerichtshof (the German Federal Court of Justice, the uninitiated) and relates to the use of shades of yellow on language learning related goods and products.  Having had a look at the various media reports on the case (see e.g. here, here, here), it does promise some excitement.

Yellow too...

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 Cologne 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.

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 Court.

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.