BGH decides: Obi loses trademark protection for Orangeton

The hardware store chain Obi has lost trademark protection for its orange shade. The Federal Court of Justice (BGH) decided that the color was not worth protecting and rejected the company's appeal against a decision by the Federal Patent Court.

This is the end of a long-standing dispute between Obi and the competing hardware store chains Hornbach and Globus, whose market presence is also determined by the color orange. They had applied for the cancellation of the Obi color trademark from 2010. Unlike Obi, companies have repeatedly had success in protecting their colors in the past: the savings banks won a legal dispute over a red color about ten years ago. The confectionery manufacturer Lindt had the gold tone of the foil for its Easter bunny protected, magenta belongs to Telekom and purple belongs to the Milka brand.

According to the presiding judge of the First Civil Senate, the color orange is at most a reference to hardware store chains in general, but not to a specific hardware store like Obi. Abstract color trademarks - these are trademarks that protect a color as such - usually lack distinctiveness. As in the present case, consumers cannot determine its origin based on the color of a product.

“Our house color remains orange,” said Obi in his first reaction. "Regardless of the formal registration, the color orange remains one of Obi's central visual identification features." The company had previously argued that the special light red-orange color was a central and distinctive part of its brand identity. The BGH, like the Federal Patent Court before it, sees this differently.

Reports submitted by the parties were also decisive for the BGH's decision. Obi had two demographic studies carried out several years apart, according to which 45.6 and later 49.6 percent of the total population associated the color orange with Obi. According to the Federal Patent Court, the BGH also saw this as too little. A report from the opposing side came to an “attribution level” of only 30 percent.

Obi representatives probably had reason to paint the case in advance: in a preliminary assessment in May, the First Civil Senate had indicated that the chances of the lawsuit being successful were rather slim. Among other things, it was concluded that the necessary distinctiveness was missing and that the color orange could not be clearly and exclusively assigned to Obi. Other hardware store chains also used the colors orange or red.