Langenscheidt Yellow Decision of the Federal Supreme Court (Bundesgerichtshof) 18 September 2014 – Case No. I ZR 228/12

• Published in: IIC - International Review of Intellectual Property and Competition Law Vol. 46; no. 3; pp. 372 - 378
• Format: Journal Article
• Language: English
• Published: Berlin/Heidelberg Springer Berlin Heidelberg 01.05.2015
• Subjects: Decision • Trade Mark Law; Intellectual Property; IT Law; Law; Law and Criminology; Media Law; Contourless colour mark; Similarity of goods; Highly distinctive character; Similarity of signs; Use as a trade mark; Risk of confusion
• ISSN: 0018-9855; 2195-0237
• DOI: 10.1007/s40319-015-0334-z

A stay of proceedings in a trade mark infringement case with regard to cancellation proceedings aimed at the mark at issue is as a rule not possible when there is no significant likelihood that the cancellation will succeed. A highly distinctive character of an abstract colour mark is not a necessary prerequisite for the assumption of the use of the contested colour as a mark. There is a high degree of similarity between bilingual dictionaries and language-learning software. If the public perceives a colour on the product packaging at issue as an independent (secondary) mark and not as a part of a combined mark, this colour must be used in isolation as the basis for the test of similarity of signs.