Frankfurt/Main 16 October 2008 - Baker & McKenzie successfully obtained a favourable judgement to Hewlett-Packard by the Hanseatic Court of Appeals, Hamburg, concerning an infringement case brought by Deutsche Telekom AG. According to the decision, dated October 8, 2008, Hewlett-Packard’s advertising materials for computer printers, fax machines, scanners and photocopiers do not infringe Deutsche Telekom AG’s uncontoured color mark “Magenta“. With this judgment, the court affirmed an earlier decision of the Hamburg District Court of August 2007 which had also ruled in favor of Hewlett-Packard. The court refused to grant leave to appeal.

The subject of the litigation, which started in 2006, was an advertisement for a HP multifunction printer providing scanning, photocopying and faxing features dating from the year 2005, where HP had used a background color that was similar to magenta. HP succeeded in carrying its point that the color was not used as a sign. Only in exceptional cases are colors deemed as an indication of origin rather than a means of design, such as in cases where a protected trademark color is used in an advertisement to achieve a signal effect. HP successfully argued that there is no unlimited protection for the trademark “Magenta” beyond the range of telecommunication services. Also, the court did not accept the plea that the color “magenta”, as a well-known trademark was being diluted.

Legal counsel of Hewlett-Packard GmbH:
Baker & McKenzie (Frankfurt): Dr. Michael Fammler, Dr. Ulrich Mehler

Legal counsel of DTAG:
Bird & Bird (Duesseldorf and Munich): Prof. Michaeli, Dr. Joseph Fesenmair

Hamburg Court of Appeals, 5th Division for Civil Matters
Betz (presiding judge)