Munich, 22 September 2026 - In its judgement of 17 September 2026 (Case No. I ZB 58/25), the German Federal Court of Justice (BGH) cancelled OBI’s abstract colour trade mark ‘Orange’ (RAL 2008), which had been registered for retail services relating to building and DIY products. ADVANT Beiten and BGH lawyer Prof. Dr. Christian Rohnke teamed up to represent HORNBACH Baumarkt AG, one of the two applicants in the proceedings.
With this ruling, the BGH confirms the high standards required for the protection of abstract colour marks under trademark law. As a rule, these lack inherent distinctiveness. A registration can therefore only be valid if the colour has acquired distinctiveness through use in the market Generally, this can only be substantiated by a market survey demonstrating a recognition rate of more than 50 percent.
In the present proceedings, the consumer surveys submitted by the trade mark proprietor were insufficient. In the expert report from the registration procedure, OBI had achieved a brand recognition rate of just 45.6 per cent amongst the relevant target audience, namely the general population. The recognition rate of 49.6% among the general public shown in the most recently submitted consumer survey was refuted by a counter-expert opinion filed by HORNBACH Baumarkt AG, which showed a recognition rate of only around 30% for the relevant public. The BGH ruled that there is no obligation to conduct an official investigation in the event of two conflicting expert reports, neither of which was open to criticism as such.
"The ruling emphasises that high standards must be applied when assessing the market acceptance of abstract colour marks. Anyone claiming a trade mark monopoly over a colour shade must be able to demonstrate, by means of a clear expert opinion on public perception, that the relevant public – and not some narrower group of consumers – recognises that particular colour shade as an indication of origin," says Dr. Christina Hackbarth, who has been handling the proceedings for ADVANT Beiten – initially together with Angelica von der Decken – on behalf of HORNBACH Baumarkt AG from the outset.
ADVANT Beiten provides comprehensive advice to companies on the protection and enforcement of trade mark rights, as well as on trade mark disputes. The Federal Court of Justice’s ruling is likely to be of considerable significance for future practice regarding the registration and defence of abstract colour trade marks.
Regarding the proceedings
German Federal Court of Justice, judgement of 17 September 2026 – I ZB 58/25
The Federal Court of Justice’s press release is available on the BGH website.
Public Relations
Frauke Reuther
Manager Communications
ADVANT Beiten
+49 (69) 75 60 95 - 570
frauke.reuther@advant-beiten.com
