Lack of distinctiveness: Color mark must be deleted
In its decision of March 11, 2025, the Federal Patent Court confirmed the deletion of the shapeless color mark ‘Purple’ (Pantone 2587C) for pharmaceutical products and powder inhalers. According to the court, the color mark lacks the required distinctiveness. Furthermore, it also does not demonstrate sufficient public recognition, case number 25 W (pat) 29/22.
In principle, colors can also be registered as trademarks. However, a prerequisite for trademark registration is that the sign possesses the necessary distinctiveness. In practice, this is often difficult for colors, as consumers generally do not perceive them as an indication of a particular provider or manufacturer, according to the commercial law firm MTR Legal Rechtsanwalt, which offers advice, among other areas, in trademark law.
BPatG grants the request for deletion of the mark
The decision of the Federal Patent Court shows that even a registered color mark does not have to retain its trademark protection. In this case, a company had registered the color purple (Pantone 2587C) as an abstract color mark for pharmaceutical products and inhalers. Four years after registration, a request for deletion was filed with the German Patent and Trademark Office (DPMA), as the eligibility of the mark for protection was questioned due to a lack of distinctiveness. While the DPMA had rejected the corresponding nullity request for the color mark, the BPatG granted the application. It decided that the registered color mark must be deleted due to lack of distinctiveness.
To substantiate its decision, the Federal Patent Court explained that according to Sec. 8(2)(1) MarkenG, a mark lacks the required distinctiveness if it is not understood by the public as an indication of the commercial origin of the goods or services. Abstract color marks that have no specific shape or design are generally considered not distinctive, as consumers usually do not perceive colors as an indication of origin.
Color does not possess inherent distinctiveness
The BPatG determined that the color purple (Pantone 2587C) does not possess inherent distinctiveness. Colors are generally not perceived as an indication of commercial origin but instead usually serve decorative purposes. Particular circumstances that could establish distinctiveness, such as a very specific market or a limited number of goods, are not present here, according to the court.
An exception is possible if the mark has acquired distinctiveness through use under Sec. 8(3) MarkenG. This requires proof that a significant portion of the relevant public associates the color with a specific commercial origin. However, the BPatG considered that proof of acquired distinctiveness had not been provided. The surveys submitted were limited to actual customers of the company and did not take into account potential buyers.
Acquired distinctiveness not proven
The court emphasized that there are no fixed thresholds from which a mark is considered to have acquired distinctiveness. Rather, a comprehensive assessment of all relevant circumstances is required. In the present case, it could not be established that a significant portion of the relevant public perceives the color purple as an indication of the commercial origin of the products.
Registering a trademark offers the owner many advantages. The owner receives an exclusive right, meaning others are not allowed to use the trademark. The owner can take legal action against trademark infringements by third parties. However, the BPatG decision makes clear that the requirements for registering abstract color marks are high. If a color is to be protected as a trademark, either the inherent distinctiveness of the color must be proven or comprehensive acquired distinctiveness must be demonstrated. This requires careful preparation and well-founded evidence when registering abstract color marks.
Registering a color mark is difficult but possible
Registering a color as a trademark may be difficult, but it is not impossible. There are examples of successful color marks, for instance in the fields of telecommunications, banking, skin creams, or confectionery. In these cases, the marks achieved acquired distinctiveness due to their high level of recognition.
MTR Legal Rechtsanwalt has extensive experience in trademark law and advises on the development of effective trademark protection.
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