Composite trade mark and dominant element

A composite trade mark is a sign made up of several elements, whether word, figurative or colour elements, combined into a whole. The dominant element is the one which, through its size, position, distinctive character or power of attraction, shapes the recollection the public retains of the sign. The notion is not defined by any text, but it structures the comparison of signs required by Article L. 713-2 of the French Intellectual Property Code, Article 9 of Regulation (EU) 2017/1001 and the case law of the Court of Justice of the European Union (CJEU).

Overall impression and the role of dominant elements

The CJEU holds that likelihood of confusion must be assessed globally, by reference to the overall impression created by the signs, bearing in mind their distinctive and dominant elements. Similarity of signs may be assessed on the basis of a single component only if all the others are negligible in that overall impression. The average consumer perceives a trade mark as a whole and does not analyse its details, but more readily remembers certain elements, often the name, which they use to refer to the goods.

The respective weight of word and figurative elements

In a figurative trade mark containing words, the word element is in principle considered more striking than the graphic element, since the public refers to goods by their name. This factual presumption gives way where the figure is particularly original or occupies a predominant place, or where the word is descriptive or commonplace. A weakly distinctive element, such as an indication of quality or origin, carries little weight in the comparison, even if it is visually prominent, because the public does not see it as performing an identifying function.

Independent distinctive role and effects in litigation

The CJEU accepts that an earlier trade mark incorporated in a composite sign may retain an independent distinctive role, without being its dominant element, and thus give rise to a likelihood of confusion, for example where it is combined with the third party’s company name. The analysis of the dominant element arises in opposition proceedings, invalidity actions and infringement actions, but also in proof of use, where use in a modified form is accepted only if the distinctive elements of the registered sign are preserved.

Key points

A composite trade mark is compared as a whole, but the court gives particular weight to its dominant and distinctive elements. The word element often prevails, although the rule is not absolute. At the filing stage, it is prudent to protect the word mark and the logo separately where each has value of its own. Before an opposition, the dominant element of each sign should be precisely identified and the descriptive components, which carry little weight in the assessment, set aside.

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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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