Protecting a colour as a trademark: why OBI lost its orange mark

Even a registered mark can be challenged

The colour orange was applied for in 2010 and registered on 22 November 2012 as a mark with acquired distinctiveness. Protection covered retail services relating to building and DIY supplies. Following cancellation applications, the German Patent and Trade Mark Office (DPMA) ordered cancellation. The appeal to the Federal Patent Court and the subsequent appeal on points of law to the BGH were unsuccessful (BGH, operative part and paragraphs 1 to 4 and 13).

The decision concerns this particular right. It does not decide the status of all OBI signs or prohibit the company from using orange. Nor does it generally permit copying another business’s logos. The applicable deadlines and relevant dates must also be checked separately for new invalidity proceedings: because the cancellation applications were old, earlier law applied in part here (paragraphs 12 to 15; section 50 of the German Trade Mark Act).

The colour must do more than look familiar

Section 3(1) of the German Trade Mark Act expressly includes colours among signs that can, in principle, be protected. An abstract colour mark claims the colour itself, independently of any particular logo shape. A combined word and figurative mark, by contrast, concerns the specific combination of lettering and design. The DPMA expressly distinguishes these forms of mark.

Registration requires, in particular, that the mark is not devoid of distinctive character (section 8(2), no. 1 of the German Trade Mark Act). The relevant public must understand the colour as an indication of the origin of the goods or services. Colours generally lack that ability; particular market circumstances may justify a different assessment. The BGH found no such circumstances here. Many suppliers used orange or neighbouring shades of red (paragraphs 18 to 20).

A colour that initially lacks distinctive character can acquire it through use (section 8(3) of the German Trade Mark Act). Recognition, advertising expenditure and years of use are relevant, but do not automatically prove it. Especially where the colour usually appears together with the business name, it is necessary to establish what customers actually recognise as an indication of origin (paragraphs 23 and 54 to 56).

The relevant public is part of the evidential question

In the OBI proceedings, looking only at people particularly interested in DIY was insufficient. The BGH treated the general population as the relevant public because practically anyone may need building or DIY supplies at some point. The legally relevant group is determined by the goods and services, not solely by the chosen advertising audience (paragraphs 27 to 37).

Our assessment for businesses and creators: a survey of your own customers or followers therefore does not automatically answer the trademark question. An existing audience may be narrower than the potential customer base. Who should be included must be established by reference to the particular offering before a survey is conducted. The decision does not make the entire population the relevant public for every sector.

Why 49.6 per cent did not establish secure protection here

A 2020 survey found an attribution rate of 49.6 per cent. A competing survey found 30 per cent. The BGH upheld the conclusion that significant doubts remained. The defeat therefore cannot simply be explained as “just below 50 per cent”. Although the court identifies a figure exceeding 50 per cent as the usual case, it requires an overall assessment and allows for special circumstances (paragraphs 40, 51 and 57 to 62).

In cancellation proceedings, the trademark owner bears the burden of proving acquired distinctiveness. A competing survey can undermine the court’s conviction without having to disprove the first survey’s methodology. Methodological weaknesses also require a differentiated assessment. Here, the Federal Patent Court was not required to make up for the missing proof by commissioning a fresh survey of its own motion (paragraphs 60 to 67, 78 and 85 to 88).

What to prepare before applying for a colour mark

Our practical recommendation: first decide whether you want to protect the business name, a particular logo or the colour itself. For an abstract single-colour mark, section 10(1) of the German Trade Mark Ordinance requires a colour sample and its number in an internationally recognised colour classification system. These formal particulars do not replace proof that the sign qualifies for protection.

Our own example: a creator uses the same shade on every package, alongside a large name. High sales do not then necessarily demonstrate that buyers understand the isolated colour as an indication of origin. Registering the name or logo raises a separate protection question. The appropriate combination depends on the actual presentation and possible earlier rights.

• Compile the intended sign, colour code and specific goods or services.
• Preserve dated advertising material, packaging and examples of how the colour is actually used.
• Record sales, duration of use, geographical reach and similar market presentations.
• Provide existing survey reports, including questionnaires and analyses; prepare any new survey from both a legal and methodological perspective.
• Bring existing register entries, objections and cancellation applications.