Term and Definition of Figurative Mark
Ein Figurative Mark is a graphic symbol composed entirely or predominantly of pictorial elements—such as shapes, colors, lines, or graphic designs—and which, without or with minimal textual components, signals a specific message, origin, or affiliation. Figurative marks are frequently used to identify goods, services, businesses, or processes, and are particularly important in trademark law, competition law, and in the context of design protection.
Figurative Marks in the Legal System
Trademark Protection of Figurative Marks
Figurative Marks as Trademarks
In trademark law, figurative marks are expressly recognized as one of the possible types of marks (§ 3 para. 1 MarkenG). They may be registered, independent of words, letters, or numbers, as so-called figurative marks with the German Patent and Trademark Office (DPMA) as well as the European Union Intellectual Property Office (EUIPO) and protected accordingly. What matters is that the figurative mark serves to distinguish a company’s goods or services from those of others and can be graphically represented.
Requirements for Registration
Various legal requirements must be met for the registration of a figurative mark as a trademark:
- Distinctiveness: The figurative mark must be suitable for distinguishing the designated goods or services of a company from those of other companies (§ 8 para. 2 no. 1 MarkenG).
- Need to Keep Free: Marks that consist exclusively of signs or indications which, in common parlance or in customary trade usage, serve to designate characteristics of the relevant goods or services are not eligible for protection (§ 8 para. 2 no. 2 MarkenG).
- Absence of Grounds for Refusal: There must be no absolute grounds for refusal (especially violation of public order or morality, §§ 8 ff. MarkenG).
Effect of Trademark Protection
With a successful registration as a trademark, the owner of a figurative mark obtains the exclusive right to use the mark for the protected goods or services and to prohibit use by third parties (§ 14 para. 1 MarkenG).
Trademark Conflicts and Likelihood of Confusion
When a figurative mark is applied for, the office does not examine prior rights of third parties. After registration, an opposition procedure may follow, especially if there is a likelihood of confusion with existing trademarks (including figurative marks) (§ 9 para. 1 MarkenG). What matters is whether the visual impact of the marks is so similar that relevant circles of the public may be confused.
Design Protection of Figurative Marks
Registration as a Design (formerly Registered Design)
Figurative marks can also be protected as designs under the Design Act (§ 1 no. 1 DesignG) if they are new and have individual character. Design protection relates to the aesthetics of the figurative mark, independent of its registrability as a trademark.
Relationship between Design Protection and Trademark Protection
Trademark and design protection may overlap with respect to a figurative mark, but they are not mutually exclusive. While design protection focuses on the external appearance and its novelty, trademark law protects the function of the mark as an indication of origin.
Copyright Protection of Figurative Marks
Requirements for Copyright Protection
A figurative mark may also enjoy copyright protection as a work of fine art within the meaning of § 2 para. 1 no. 4 UrhG, if it constitutes a personal intellectual creation (§ 2 para. 2 UrhG). The decisive factor is the level of individual creative effort.
Consequence of Copyright Protection
If protection applies, the creator may control use, reproduction, and distribution of the figurative mark and take action against unauthorized uses (§ 15 UrhG). This protection exists independently of registration and expires 70 years after the author’s death (§ 64 UrhG).
Protection of Figurative Marks under Competition Law
Protection against Unfair Imitation
According to § 4 no. 3 Act against Unfair Competition (UWG), figurative marks may be protected against imitation, provided they have a competitive individual character and are used by competitors under certain circumstances (in particular, cases of unfairness).
Likelihood of Confusion and Misleading Indication of Origin
If a figurative mark is used by third parties in a manner that could mislead as to commercial origin, claims for injunctive relief and damages may be raised (§§ 8, 9 UWG).
Figurative Marks in an International Context
EU Trademark and International Application
Figurative marks may be protected as European Union trademarks (EU trademark) or internationally via the Madrid Agreement. The grounds for refusal and registration requirements are essentially in line with the respective national systems.
Harmonization of the Term Figurative Mark
In international law, the term “Figurative Mark” (English) or “Marque Figurative” (French) is common. The requirements regarding representability and distinctiveness are largely harmonized.
Distinction from Other Types of Signs
- Word-picture mark: Combines pictorial and textual elements.
- Pure word mark: Consists exclusively of letters, numbers, or words
- Three-dimensional mark: Protection of a specific three-dimensional form.
Practical Aspects and Examples
Some of the best-known examples of protectable figurative marks include corporate logos, emblems, and mascots. Pictograms can also—if original and distinctive—enjoy legal protection as figurative marks.
Conclusion
Figurative marks are relevant in various areas of law and, depending on the form of protection, design, and use, enjoy extensive legal protection. The interplay of trademark, design, copyright, and competition law provides a layered framework of protection, the concrete scope and enforceability of which must be assessed in each individual case. Careful examination of eligibility for protection and risk assessment prior to the use or application for registration of figurative marks is always recommended.
Frequently Asked Questions
When is the use of figurative marks permitted under copyright law?
The use of figurative marks is subject to copyright if they display creative authorship that reaches the so-called “threshold of originality.” This means that individual, creative figurative marks are eligible for copyright protection. Copyright gives the rights holder the exclusive right to reproduce, distribute, make publicly available, or modify the figurative mark. Lawful use fundamentally requires the author’s consent, unless a statutory limitation applies (such as the right to quotation (§ 51 UrhG) or private copying (§ 53 UrhG)). However, many simple pictograms or very plain graphic symbols are not protected by copyright due to lack of originality, though they may still be covered by other rights (e.g., trademark or design law).
What role does trademark law play for figurative marks?
Figurative marks can be protected as a trademark, provided they meet the requirements of the Trademark Act (MarkenG). A figurative mark is particularly suitable as a figurative mark or as part of a word-picture mark. Trademark protection arises either by registration in the trademark register at the German Patent and Trademark Office (DPMA) or, in certain circumstances, by acquired distinctiveness. The trademark protection grants the owner the exclusive right to use the figurative mark for the registered goods and services and to prohibit use by others in case of likelihood of confusion. Registration and entry of the figurative mark require compliance with specific formal and substantive requirements, in particular, the mark must not be purely descriptive or necessary to be kept free.
Can figurative marks be protected by design law?
Yes, design law (formerly Registered Design Law) provides protection for the external appearance of products, which can include figurative marks if they are new and possess individual character (§ 2 DesignG). The protection period is a maximum of 25 years from the filing date. What is protected is the specific appearance of the figurative mark, not its idea or function. Registration at the DPMA or the European Union Intellectual Property Office (EUIPO) is required, which provides a formality-driven protection, as there is no substantive examination of novelty and individual character. In the event of infringement, the owner may claim injunctive relief and damages.
Is there protection for figurative marks that have become public domain?
Once copyright, trademark, or design protection for a figurative mark has expired (for example, after 70 years post mortem auctoris in copyright, or after expiry of trademark or design protection), the figurative mark generally becomes part of the public domain. New protection may nonetheless be established, for example, by creating a new, modified figurative mark or by reapplying as a trademark, provided the legal requirements are met. However, special rights such as competition law (§ 4 no. 3 UWG – protection against imitation) may still apply in individual cases, for example, if a figurative mark still enjoys acquired distinctiveness and unfair exploitation or deception occurs.
What legal consequences threaten with unauthorized use of protected figurative marks?
Unauthorized use of protected figurative marks can have various legal consequences. Under copyright law, particularly claims for injunctive relief and removal, damages, and information claims as per § 97 UrhG may arise. In trademark law, in addition to claims for injunctive relief and damages, there may be claims for destruction (§ 18 MarkenG) and criminal consequences (§ 143 MarkenG). Design law provides for similar sanctions. In all cases, the rightsholder may also be able to obtain a preliminary injunction to immediately stop use. Legal costs from attorney cease-and-desist letters and court proceedings may also be added.
Is the use of official figurative marks permitted?
Official figurative marks, such as state seals, emblems of sovereignty, or official inspection marks, are often subject to special protective regulations. In Germany, misuse of such marks is generally prohibited (§ 124 OWiG). In addition, certain official figurative marks are also protected by special laws (for example, the Act on Regulatory Offenses or the Act on the Use of the Federal Eagle). Violations may result in fines or criminal penalties. Use is only permissible if it has been expressly authorized or occurs within a legal framework, for example for scientific, documentary, or illustrative and explanatory purposes without risk of misleading the public.
What particularities exist online with regard to figurative marks?
On the Internet, the law of the country of origin of the offer applies (country of origin principle), but rights of the countries in which the figurative marks can be accessed may also be affected. This is especially relevant for questions concerning international trademark and copyright infringements. The use of figurative marks on websites, in social media, or as an app icon can therefore have cross-border consequences. Special attention should be paid to the liability privileges for “host providers” and the structure of licensing models (e.g., Creative Commons). Moreover, when using third-party figurative marks in catalogs, shops, or portals, the respective rights of use must always be examined carefully, since even making goods available, not just selling them, may constitute a legal violation.
