Figurative mark

A figurative mark is a trade mark consisting of graphic elements, drawings, logos, stylised shapes or combinations of colours arranged on a surface, either without any word element or with a word element presented in a particular typeface or graphic design, the mark then being described as semi-figurative. It is represented on the register by an image, in accordance with the requirement of clear and precise representation in Article L. 711-1 of the French Intellectual Property Code and Article 4 of Regulation (EU) 2017/1001.

The subject matter of protection

The protected subject matter is the image as filed. Where the filing combines a word with a graphic design, protection attaches to the whole and not to the word taken in isolation, so that a third party who takes up the word in another presentation does not reproduce the mark identically and can be sued only on the basis of imitation. In litigation, the signs are compared first on the visual level, but the word element of a semi-figurative mark often remains dominant in the overall impression, because the public remembers and pronounces it. The colours claimed on filing form part of the representation, and a filing in black and white is no longer regarded in practice as covering all colours.

Conditions of validity

The figurative mark is subject to the same absolute grounds for refusal as other marks. It must be distinctive, which excludes basic geometric shapes, faithful representations of the product or the customary pictograms of the sector, which will not be perceived as an indication of origin. It must be available, and availability is assessed here too by reference to the earlier rights listed in Article L. 711-3 IPC, which include a third party’s copyright and design in the drawing taken up.

Interaction with copyright and design law

An original logo is also a work protected by copyright, and its filing as a trade mark transfers no right in that work. A business that has had its logo created by a graphic designer or an agency must obtain a written assignment of the economic rights, failing which it owns a trade mark whose underlying work it does not control, which exposes it to an action by the creator and weakens the title. The same graphic design may, finally, be filed as a registered design, for a limited term but with no requirement of genuine use or of attachment to particular goods.

Key points

The figurative mark protects an image, where applicable combined with a word, and its protection does not extend to the word taken alone. It must be distinctive, available and covered by an assignment of the copyright of the logo’s creator. File the word mark and the logo separately, claim the colours actually used, and refile the logo when the visual identity changes substantially.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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