Is it worth spending resources in protecting a pure figurative/device mark? How can such a mark be enforced? Can it be the basis of successful actions towards semi-figurative marks? Under which conditions?
All these questions led us to proceed to an analysis of the recent case-law concerning the French and European Offices’ position when comparing a figurative mark to a semi-figurative mark.
1) Criteria of the similarity between a figurative and a semi-figurative trademark
This analysis of the recent case-law revealed that the French/European Offices always refer to the same criteria when comparing a pure figurative mark to a semi-figurative trademark.
We have summarized these criteria below:
– the logo has to be distinctive in relation with the goods of interest;
– the two logos have to be very similar especially if the word elements inserted within the contested mark are also distinctive;
– the word elements inserted within the contested mark should be less distinctive than the figurative element (even if they appear in a bigger size, they may be considered as less distinctive than the logo if they are not inherently distinctive/enjoy a low degree of distinctiveness in relation with the concerned goods);
– If the verbal and figurative elements have the same level of distinctiveness per se, the device element has to be more dominant on a visual standpoint (by its size, position in the mark, etc…) than the word elements;
– The logo’s reputation: if a logo is well-known, its scope of protection is much more extended.
These criteria have been taken into account in the below-mentioned decisions.
a) Trademarks considered as being similar
– vs, INPI, OPP n°12-2662 / MAS, 12/19/2012:
The French trademark Office noticed that the prior figurative mark was highly distinctive, that the device elements of the two trademarks were very similar and that the device element in the contested trademark was at the leading place of the sign and bigger than the verbal element. Furthermore, it underlined the fact that the logo of the prior mark has a certain reputation. Hence, even if the verbal element was distinctive too, the office concluded that the contested trademark application was confusingly similar with the prior mark.
– vs INPI, OPP 12-2502 / MS, 12/06/2012:
The Office pointed out that the prior figurative mark was highly distinctive, that the device elements of the two trademarks were similar whereas the verbal element of the contested trademark has a low degree of distinctiveness. It also noticed that the device element was at the leading place within the contested trademark (although the word elements LES APOTHICAIRES BEAUTY PRESCRIPTION appear in a big size). The Office concluded that there is a risk of confusion between the two trademarks.
This decision clearly proves that the distinctive level of the verbal elements is of great importance – indeed, although they are written in a very big size, since they enjoy a low level of distinctiveness, the Office considered that the device element is the most dominant/distinctive element.
– vs INPI, OPP12-0142 / JG, 07/02/2012:
The French Office noted that the device elements of the two marks were highly distinctive, that they were very similar and that the verbal element of the contested trademark application is purely descriptive. It concluded that a likelihood of confusion exists.
Once again, it is important to note that the distinctive character of the word elements has an important role in the assessment of the existence of a risk of confusion.
– vs INPI, OPP 12-3378 / MS 01/24/2013:
The French Office noticed that the device elements of the two marks were highly distinctive, that they were quite similar and that the presence of the verbal element « LITTLE RETRO » and of the colors within the device element does not alter the immediate perception and the essential character of the device element. Hence, the contested trademark application is an imitation of the prior mark;
– vs OHIM, OPP B 1 888 596, 09/12/2012 :
The OHIM considered that the contested mark has no elements which could be considered clearly more dominant than the other. It also noticed that importance must be given to the fact that the visually highly similar depiction of this figurative image is reproduced at the beginning of the contested mark. It is also unlikely that the consumer will keep in mind the slight differences in the density of the colours of the quadrants, in the slightly diverging forms of the rectangles in the contested mark and in the rounded corners of the square in the contested mark. Further, the said representation is eyecatching, arbitrary and fanciful and attracts the consumer’s attention. It is not a negligible, purely decorative visual feature which would merge imperceptibly in the overall impression of the contested mark. The additional words ‘Home DASHBOARD’ cannot outweigh the major influence of the overlapping distinctive figurative element, which will lead the public to believe that the identical or highly similar goods come from the same or economically linked undertakings and that the contested sign represents a new product line of that same entity.
– vs, OHIM, B 1 885 030, 11/05/2012
The OHIM noted that the marks under comparison have no elements which could be considered clearly more distinctive or dominant (visually eye-catching) than other elements and that the earlier trade mark has a reputation in the European Union in connection with all the goods for which it is registered. Furthermore the figurative element is visually as outstanding as the word element and it is not less distinctive than the word element either. Therefore, the office concluded that it is not overshadowed by the word element in any way; it is at least as important as the word element and it plays an independent distinctive role within the mark. It concluded that a likelihood of confusion exists.
b) trademarks considered as being dissimilar
– vs INPI, OPP 11- 3671 / JM, 07/27/2012:
The French Office considered that the device elements of the signs had a different overall impression, that the presence of the distinctive verbal elements HARMONIE MUTUELLE created sufficient differences between the signs and that the device element of the contested application was not the dominant element of this sign.
Furthermore, the Office pointed out that if it considers that the only presence of the same geometric shape in two trademarks is sufficient to create a risk of confusion, it will give to the owner of the prior mark the right to oppose every sign containing a hexagonal shape.
This clearly demonstrates the wish of the Office to remind the owner of the fact that its scope of protection is limited to this specific representation of a specific logo, and that it does not own a protection on the « global hexagonal shape ».
Hence, the Office found that there was no likelihood of confusion on the part of the public.
– vs , INPI, OPP 12-1942, 11/09/12:
The Office pointed out that the signs had a different overall impression. It considered that the figurative elements of the sign were distinctive but also that the word element inserted within the contested mark was distinctive too. The figurative element of the contested sign is not the most dominant element of the sign due to its size (equal to the size of the letters) and its place (it replaces a letter of the verbal element and is inserted within the word element). This device is thus an integral part of the verbal element. The Office concluded that there was no risk of confusion on the part of the public.
– vs, INPI, OPP 12-3407 / CBO, 01/29/2013:
The Office noticed that the two device elements differed in their presentation; that the contested sign contained two verbal elements and that the signs had a different overall impression. Furthermore, the Office stated that even if the device element of the contested sign is considered as being distinctive, the verbal element AVELTEC is perfectly distinctive too and the two elements have exactly the same size, hence, the Office concluded that the figurative element could not be considered more distinctive or dominant in the sense of visually eye-catching than the other elements. Therefore, the Office considered the signs as being dissimilar.
CONCLUSION: Scope of protection of a figurative mark
The scope of protection of figurative marks is quite limited. Indeed, the Offices consider that the scope of protection of these marks is limited to their specific representation/stylization. Moreover, even if the contested mark contains a similar device, the inclusion of distinctive word elements within this mark leads the Offices to reject the existence of a risk of confusion in almost all the cases.
Generally speaking, it is thus not easy to enforce a figurative trademark.
However, it is still very important to own such a figurative trademark (vs a semi-figurative mark) in order to be able to challenge semi-figurative marks because in some cases, basing such actions on a prior semi-figurative mark would not be successful.
This is confirmed by the above-mentioned positive decisions which are quite encouraging (especially decisions such as vs) since it is possible to use a figurative mark as the basis of an opposition targeting a semi-figurative mark, as soon as the word elements included within the contested mark are not distinctive, or to a low degree only and if the concerned logos are obviously very similar.
Moreover, one has to distinguish the filing of trademarks and their use. Indeed, if a figurative mark may not be enforced towards the filing of a complex semi-figurative mark, this mark can still be the basis of a judicial action against the use of the said mark (in case only the logo/device of this mark would be used). The existence of such a mark would then be very helpful in this case.
This being said, the assessment of a potential confusing similarity between a prior figurative mark and a semi-figurative mark has obviously to be made on a case-by-case basis, but still taking into account the above-mentioned criteria, which can be quite helpful.