German trademark law: Black-and-white trademarks may not automatically offer protection against colored copies, German Federal Court of Justice rules

The German Federal Court of Justice (Bundesgerichtshof, BGH) has handed down a decision which shines a light on a curious aspect of trademark law. In the case which was decided on 12 March 2015, German automaker BMW had sued a company which had produced and sold replica badges with the famous BMW sign, namely the blue-and-white propeller sign found on hoods of the Bavarian cars, marketed as spare parts (BGH, Urteil vom 12.03.2015, Aktenzeichen I ZR 153/14 – BMW-Emblem).

In this particular case, the Bavarian automaker had based its lawsuit on a German national trademark which consists of the BMW propeller sign in black-and-white, because of the similarities in the details of the design. However, while the registered trademark consisted of the logo in black-and-white only, the infringing product itself was using the well-known blue-and-white of the brand.

Interestingly, the BGH took the stance that there was no immediate infringement of the original trademark. That is, because the original trademark is black-and-white only, a copy which is colored strictly speaking cannot be considered “identical”. While this is, upon reflection, quite logical and even somewhat obvious, it runs counter to the casual observer’s intuition. To anyone looking at the emblem in question, this was immediately recognizable as a quasi-original BMW emblem, black-and-white or not. And indeed, the lower courts (the District Court of Hamburg, Landgericht Hamburg) and the court of appeal (the Hamburg Court of Appeal, Hanseatisches Oberlandesgericht in Hamburg) had fallen for this error in reasoning, taking the obvious similarities – which were there without a doubt – to mean that there was an infringement of the trademark by identical copy.

The BGH ruled that if the trademark law is applied according to its letter, one cannot say that there is an identical copy here – simply because of the difference between black-and-white on the one hand and the use of color on the other.

However, in the end, the BGH nonetheless ruled that there was a trademark infringement here, though not under the aspect of identity, but because of similarity, emphasized by the high profile of the famous BMW brand. So, in the end, the ruling of the lower courts was confirmed, though with a different reasoning. The spare part maker lost the case, and was held liable for trademark infringement.

While at first glance this may seem like a fine point of law of little practical consequence, this court decision is nonetheless significant. It shows that having a black-and-white trademark may not always be optimal for protecting a brand against infringement and copycats. Copies may escape from being held unlawful if they show sufficient differences in color. While in the present case BMW was victorious in the end, this was helped quite a bit by the brand’s general high profile. If it had been a less well-known trademark, the court decision might have turned out quite differently.