Not only is there an extensive body of case law on the protectability of figurative marks and combined word and figurative marks, but there is also Convergence Programme 3^[1], a project of the European Trade Mark and Design Network, an association of the various European offices. The project's Joint Communication^[2], which presents numerous examples, is based on the following principles:

• Word elements in a common or standard typeface, lettering or handwritten font, with or without font effects such as ‘bold’ or ‘italic’, are not eligible for registration.

• The mere ‘addition’ of a single colour to a descriptive or non-distinctive word element, whether to the letters themselves or as a background, is not sufficient to confer distinctiveness on a trade mark.

• In general, the addition of punctuation marks or other symbols commonly used in the course of trade does not render a sign consisting of descriptive or non-distinctive elements distinctive.

• In general, the fact that the word elements are arranged vertically, upside down, or in one or more lines is not sufficient to give the sign the minimum degree of distinctiveness necessary for registration. However, the way in which word elements are arranged can give a sign distinctive character if the arrangement is such that the average consumer is more likely to focus on it than to grasp the descriptive message directly.

• When descriptive or non-distinctive word elements are combined with simple geometric shapes such as dots, lines, line segments, circles, triangles, squares, rectangles, parallelograms, pentagons, hexagons, trapezoids or ellipses, these will not be accepted in principle, especially when the aforementioned shapes are used as a frame or border. On the other hand, geometric shapes can add distinctiveness to a sign if their presentation, configuration or combination with other elements results in an overall impression that is sufficiently distinctive.

• In general, a trade mark is registrable when a figurative element, which is itself distinctive, is added to a descriptive or non-distinctive word element, provided that the figurative element is clearly identifiable in the sign due to its size and position.

• A figurative element is considered descriptive or non-distinctive if it is either a faithful reproduction of the goods and services, or consists of a symbolic or stylised representation of the goods and services that does not depart significantly from the usual representation of the goods and services concerned.

• A figurative element that does not represent the goods and services but is directly linked to their characteristic features does not confer distinctiveness on the sign unless it is sufficiently stylised.

It is to be expected that the European offices will largely follow these guidelines. However, with the exception of the EUIPO, there is no legally binding obligation.
Ultimately, the decisive factor for figurative marks^[3] is whether the trade mark is capable of identifying the products for which registration is sought as coming from a particular undertaking and thus of distinguishing those products from those of other undertakings^[4] If the word element of a word/figurative mark is not distinctive, the sign as a whole may be considered distinctive if the graphical elements in turn display characteristic features which the public perceives as an indication of origin.^[5] However, the simplest geometric shapes or other simple graphic design elements, which – as the public knows from experience – are commonly used in advertising, but also on product packaging or even business letters, usually in a merely ornamental, decorative form, are not capable of individualising the products according to their origin.^[6]
For example, consumers would not perceive the pentagon sign

on a wine bottle as an indication of origin, but merely as a decoration using a basic geometric shape.^[7] The same applies to the green sign

of an octagon,^[8] a triangle,^[9]

the sign

because of its ornamental effect,^[10] the combination

of the basic shapes of a circle and a rectangle,^[11] the unobtrusive lines,^[12]

the sign

of a ‘smiley half-mouth’^[13] or a symbol

in the shape of a heart.^[14] A regular pattern of dots

can be on the surface, packaging or background and is therefore not perceived as a sign, regardless of its colour.^[15] The same applies to a surface structure

for various goods with a contoured surface, such as shoes or clothing.^[16] The checked pattern^[17]

registered for textile goods or the checked pattern^[18]

used by Louis Vuitton in brown colours, which do not differ from the usual appearance. The same applies respectively to the playing board of the well-known game ‘Ludo’.^[19] By contrast, the sign

was capable of being protected due to its similarity to the letter ‘C’ and the shape of a crescent moon.^[20]
A composite mark, including a word elements that are not protectable,^[21] can also have distinctive character as a whole if the graphical elements, in turn, have characteristic features in which the public recognises an indication of origin.^[22] However, according to case law, the graphical elements must be strikingly prominent, especially in the case of plainly descriptive information.^[23]
Thus, in the case of the trade marks

the simple figurative elements (including the blue background colour of the VISAGE sign) could not compensate for the fact that the word elements were not eligible for protection.^[24] Likewise, it is not sufficient to add the symbol ‘®’ to a sign that is otherwise not eligible for protection.^[25] Nor does the design of the trade mark

in the colours black and red does not give it sufficient distinctiveness either.^[26] The blue/green logo

was also not eligible for protection.^[27] By contrast, the rearing horse of the car brand Ferrari can no longer be perceived as the simplest geometric shape or a common graphic design.^[28] The GC's refusal of protection for the trade mark

also seems excessive; the figurative elements are certainly distinctive and the allegedly descriptive meaning of the word ‘SIR’ is not entirely comprehensible.^[29]
An examination of whether the public can more or less easily remember a trade mark in its details of its visual design does not take place even for trade marks with figurative elements.^[30]
A trade mark consisting of Far Eastern characters

can be protected regardless of how memorable it is.^[31] However, a QR code is not protectable.^[32]
A figurative mark may also lack distinctiveness if the image refers to the type or the use of the product.
For example, the trade mark

is devoid of any distinctive character for dog food because animal figures in the animal feed sector are understood as an indication of variety.^[33] For products related to bodybuilding, the trade mark

is devoid of any distinctive character.^[34] The figurative elements of the trade mark

are devoid of any distinctive character for electrical devices.^[35] The sign

for financial and telecommunications services is also perceived as a mere indication of use and not as an indication of commercial origin.^[36] The same applies respectively to a photographic image of an office building, which may be perceived as an indication of the place where the services are supplied.^[37] Finally, the image of a well-known person is devoid of any distinctive character for those products in relation to which the public establishes a thematic or other factual connection to the depicted person and therefore understands it as a (merely) descriptive reference to that person and not as a reference to the origin of the products concerned from a particular company. The image of Marlene Dietrich was therefore registrable for goods such as clothing and – to a limited extent – money or paper, but not for products such as computer programs, printed matter, books or entertainment services.^[38]
As with advertising slogans,^[39] a figurative sign that is otherwise used as an advertising tool but is not descriptive of the products concerned cannot be refused registration as a trade mark simply because of such use.
For example, a photograph of a celebrity such as Marlene Dietrich

cannot automatically be refused protection because otherwise such photographs would be used for advertising purposes.^[40]
If a figurative mark not only contains a reference to the properties of the products it denotes, but depicts the product itself, special considerations apply. Case law treats such figurative marks essentially like shape marks consisting of the shape of the product.^[41] Please refer to the principles presented above^[42] in this regard.
The figurative mark

was not eligible for registration because it was merely decorative.^[43]
In the case of combined word/figurative marks, a figurative design can give the necessary distinctive character to a word mark that is not distinctive in itself. The prerequisite for this is that there is a noticeable difference between the word that is not protectable and the sum of its conceptual and figurative components.^[44]
Although the number ‘1’ is devoid of distinctive character for the services of a television broadcaster, the well-known number ‘1’ used specifically by the television broadcaster ARD can be protected due to its specific graphic design.^[45] The sign

filed for various goods, is capable of being protected due to its original design, which allows it to be turned through 180°.^[46] By contrast, the simple juxtaposition of two words without a space between them, as in the application for ‘PharmaResearch’, does not constitute a creative element because the capital letter of the second word makes it readily recognisable.^[47]
However, the opposite is also possible, namely that a word mark that is in itself capable of being protected loses its protectability due to its graphic design.
For example, the trade mark

as an abbreviation of the term ‘biometric identification’ in relation to goods and services in the IT and telecommunications sector, is not distinctive when it comes to controlling access authorisations and identifying living beings. Not only do the (common) figurative elements not confer distinctiveness on the sign, but they actually cause the public to break the composite mark down into its constituent parts, ‘bio’ and ‘ID’. While a word mark ‘Bioid’ may be capable of protection, the composite mark is not protectable in this respect.^[48]