I. General
Under German law, colors and color combinations can generally be protected as trademarks pursuant to Section 3(1) of the German Trademark Act (MarkenG). Thus, a specific color or combination of colors is eligible for protection without being limited to a specific outline, shape, spatial boundary, or design.
Although no stricter requirements apply here than for other types of trademarks, it must be taken into account, however, that in many product areas and service sectors, the relevant public is not accustomed to perceiving a color—when used in advertising or on product packaging without the addition of graphic or word elements—as an indication of origin, since a color is generally used not as an indication of origin from a specific company but as a design element.
It must also be taken into account that the number of colors or color shades that the average consumer can distinguish is rather low, since the consumer rarely has the opportunity to directly compare goods with different color tones. In this respect, a color does not, by its very nature, generally possess the ability to distinguish the goods or services of a particular company from those of others. In this context, the public interest in the free availability of colors must also be taken into account. According to case law, these aspects are, in principle, relevant when assessing the distinctiveness of a color trademark in the context of its registrability.
Accordingly, it is generally assumed that abstract color trademarks are not inherently eligible for protection. Trademark protection for a color or color combination is therefore typically only possible if the mark has acquired distinctiveness through extensive use within the meaning of Section 8(3) of the German Trademark Act (MarkenG).
Regarding the question of whether, taking into account the guidelines of the highest courts, the color trademark applied for may exceptionally be presumed to be inherently protectable, a set of various criteria has emerged in case law. Based on these criteria, it must be assessed whether, as an exception to the principle that abstract color marks are not eligible for protection, the mark in question does in fact possess inherent distinctiveness in the specific case, which would justify its registrability.
In this context, factors relevant to the assessment of distinctiveness include whether the trademark application relates to a narrow, specific market in which the public has become accustomed to the use of colors as trademarks, and whether the specific color in question is itself suitable to serve as an indication of origin with respect to the claimed goods and services.
II. Recent Decision by the Federal Court of Justice on the Abstract Color Trademark ‘Orange’
The Federal Court of Justice had to decide whether the color orange enjoys trademark protection for a home improvement store chain. The case concerned a color trademark applied for in 2010 for retail services in the field of construction and do-it-yourself products. The trademark was entered into the register of the German Patent and Trademark Office (DPMA) as a so-called ‘well-established trademark’ based on a market research report submitted by the trademark owner. Two competitors of the trademark owner challenged this by filing a petition for cancellation. The application for cancellation was based on the trademark’s lack of distinctiveness, as it did not refer to a specific company.
After the DPMA granted the applications for cancellation, the trademark owner filed an appeal with the Federal Patent Court. The trademark owner’s appeal was again dismissed.
The appeal to the Federal Court of Justice, which was granted by the Federal Patent Court, was also unsuccessful.
The Federal Court of Justice upheld the Federal Patent Court’s decision, as the latter had correctly concluded that the contested trademark lacked distinctiveness. In particular, the court found that the contested trademark could not be deemed to possess inherent distinctiveness. The relevant public, consisting of consumers and commercial customers, is not accustomed to perceiving colors as a means of identification for the retail services relevant here— —in the field of construction and do-it-yourself products.
The crux of the decision was that the lack of inherent distinctiveness of the contested trademark had not been overcome by acquisition of distinctiveness through use pursuant to Section 8(3) of the German Trademark Act (MarkenG).
In its decision, the Federal Patent Court correctly held that the contested trademark had not acquired distinctiveness through use at the time of its application in 2010. During the registration proceedings, the trademark owner had submitted a market research report from 2012, which indicated a recognition rate of 45.6% among the general population. Furthermore, the Federal Patent Court correctly found that even as of the date of the oral hearing in 2025, it could not be established with the necessary certainty that the mark had become well-known through use. In this regard, the court referred to another market research report from 2020 submitted by the trademark owner, which showed a recognition rate of 49.6% among the general public. Accordingly, it is not relevant whether a color is known to the relevant public. The sole decisive factor is whether the color is to be understood as an indication of the commercial origin of the service from a specific company. A high level of advertising presence or decades of use of a color is therefore not sufficient to presume that the color has become established in the relevant market.
In contrast, the applicants submitted a counter-expert opinion from 2021, which indicated an association rate of 30%. In evaluating the expert opinions, the Federal Patent Court, in the view of the Federal Court of Justice, correctly assumed that the lower association rate was not attributable to methodological flaws in the counter-expert opinion. Nor, in the Federal Court of Justice’s view, is there any grounds for objection to the Federal Patent Court’s assumption that the existing doubts regarding the established reputation of the contested trademark as of January 2025 were not dispelled by the circumstances presented by the trademark owner concerning the duration and scope of the trademark’s use. In particular, the Federal Court of Justice found that the Federal Patent Court was not required to obtain, on its own initiative, a judicial opinion based on market research regarding the issue of market penetration.
With its latest decision, the Federal Court of Justice adheres to its previous case law and clarifies that abstract colors are, in principle, eligible for protection.
Two points in time are relevant to the question of whether the requirement of market penetration is met: first, (alleged) market penetration at the time of filing, and second, at the time of the oral hearing. Since sufficient market penetration could not be established at any point in time, and since the finding itself was made without legal error, the Federal Court of Justice did not reach a different conclusion than the Federal Patent Court.
However, the Federal Court of Justice does not intend to establish a general lack of protectability for abstract color marks. In the past, the Federal Court of Justice has already had to rule on various cases in which the distinctiveness of abstract color marks was in dispute. Examples include the “Sparkassen-Red,” “Magenta-Purple,” “Langenscheidt-Yellow,” and “Lindt-Gold” cases. The key factor in determining protectability is whether the relevant public recognizes the color as such as an indication of commercial origin. A mere conceptual association, on the other hand, is not sufficient.
