Success with Noerr – Langenscheidt successfully enforces its yellow colour trade mark before the German Federal Court of Justice
The commercial law firm Noerr has successfully supported the publishing house Langenscheidt in the dispute regarding its yellow colour trade mark and represented it at two court instances. The German Federal Court of Justice (Bundesgerichtshof, BGH), the final instance, has now confirmed the publishing house’s rights to its colour trade mark and established an infringement of this trade mark by the defendant, a competitor in the language learning software sector (I ZR 228/12 – Gelbe Wörterbücher (“Yellow Dictionaries”)).
In the appeal on points of law, the German Federal Court of Justice confirmed a judgement handed down by the Cologne Higher Regional Court (Oberlandesgericht Köln) in 2012. The defendant therefore remains prohibited from distributing and advertising language software in Germany in yellow packaging. The publishing house Langenscheidt is the owner of the registered yellow colour trade mark. The German Federal Court of Justice sees the requirements under trade mark law for a risk of confusion as having been met due to a very strong similarity between the products and marks and an average distinctiveness of the yellow colour trade mark.
“This judgement strengthens the rights of owners of colour trademarks”, says Noerr lawyer Jessica Loew in response to this decision. Together with the Noerr Partner and trade mark law expert Georg Jahn, Jessica Loew represented Langenscheidt in the lower court proceedings and supported the proceedings before the German Federal Court of Justice. “Colours characterize identification practices on the German market for bilingual dictionaries. This also has an impact on neighbouring products such as language software“, explains Jahn.
Advisors (1st and 2nd instances) to Langenscheidt GmbH & Co. KG: Noerr LLP
Georg Jahn (Munich), Jessica Loew (Berlin, both trademark law)
Representation at German Federal Court of Justice: Jordan+Hall Rechtsanwälte (supported by Noerr LLP)
Patentanwälte Maikowski & Ninnemann, Berlin: Dr Michael Maikowski