Using Logos to Register Descriptive Marks in Germany

One of the most common misconceptions among trade mark applicants in Germany is the belief that adding a logo, a different font, or a decorative border to a descriptive word will overcome a refusal for lack of distinctiveness or descriptiveness. The DPMA and the Federal Patent Court (BPatG) have made clear that minimal stylisation does not cure descriptiveness. Understanding what the DPMA actually requires is essential for applicants who want to protect composite marks that include descriptive elements.

The Misconception

The logic seems intuitive: if the word “Fresh Harvest” alone would be refused as descriptive for food products, then presenting it in a distinctive font with a coloured background should make it registrable as a figurative mark. Many applicants file combined marks (Wort-/Bildmarke) on this assumption, expecting the visual presentation to provide the distinctiveness that the word element lacks.

In many cases, this strategy fails. The DPMA applies a strict standard: the overall impression of the combined mark must be distinctive, and the figurative elements must contribute meaningfully to that impression. If the graphic elements are commonplace, banal, or unremarkable, they do not alter the descriptive character of the word element, and the mark as a whole is refused.

What Fails

The DPMA and the courts have consistently refused combined marks where the figurative elements are limited to:

• Simple font changes: Presenting a descriptive word in an italic, bold, or slightly stylised typeface does not create distinctiveness. Consumers are accustomed to seeing words presented in various fonts and do not perceive a font choice as a trade mark signal.
• Basic geometric frames: Placing a descriptive word inside a rectangle, circle, or oval border is treated as a standard design choice, not a distinctive element.
• Simple colour application: Using a single colour or a standard colour combination for the text or background does not, on its own, create distinctiveness.
• Stock imagery: Generic clip-art style images or standard pictograms that relate to the goods (e.g., a leaf for organic products, a globe for international services) are considered equally descriptive as the word element and do not provide the needed contrast.
• Standard underlines or shadows: Typographic effects like drop shadows, outlines, or underlines are cosmetic and do not shift the impression.

The EUIPO-DPMA Common Communication

The DPMA participates in the European trade mark offices’ Common Communication on the Common Practice of Distinctiveness — Figurative Marks Containing Descriptive/Non-Distinctive Words. This harmonised guidance establishes a shared framework: a figurative mark containing a non-distinctive word element is only registrable if the figurative elements, taken together with the word, create a distinctive overall impression. The word element remains descriptive; it is the design that must do the heavy lifting.

Under this framework, the figurative elements must be assessed for their independent distinctive contribution. If they are merely decorative or standard, they cannot save the mark. If they are original, unusual, or striking, they may create a composite impression that the consumer perceives as a trade mark.

What Works

Combined marks that include descriptive words can succeed, but only when the figurative component is genuinely creative and independently distinctive. Elements that have been accepted include:

• Original, complex logo designs: A unique, detailed graphic that dominates the visual impression and is not merely an illustration of the goods.
• Unusual spatial arrangements: Creative positioning of text and graphic elements that go beyond conventional label layouts.
• Abstract or symbolic imagery: Non-literal graphic elements that do not directly depict the goods or services but create a memorable visual identity.
• Distinctive character designs: Mascots, stylised characters, or artistic renderings that are clearly original and would be remembered by consumers.

The test is always the same: would the average consumer, encountering the mark in the marketplace, perceive the overall composition as identifying a commercial source rather than as a mere description of the goods in a slightly decorated presentation?

The “MONSTER” Case

In a notable 2024 decision, the Federal Patent Court examined whether the use of a word mark in a highly stylised logo constituted genuine use of the registered word mark. The case illustrates the tension between word mark protection and figurative presentation: the court drew a clear line between the word element and its visual expression, reinforcing that the distinctiveness of each type of mark is assessed independently. A word mark must be distinctive as a word; a figurative mark must derive its distinctiveness from the graphic composition.

Practical Implications

This strict approach has important consequences for filing strategy in Germany:

• Do not rely on minimal stylisation: If the word element of your mark is descriptive, a superficial design overlay will not secure registration. Invest in a genuinely distinctive graphic element.
• File both marks where appropriate: If you have a strong graphic logo, consider filing it as a figurative mark alongside the descriptive word. If the word alone is not registrable, the figurative mark protects the visual brand identity.
• Distinguish word and figurative rights: Understand that registering a combined mark does not give you exclusive rights over the descriptive word element alone. Your protection covers the composite as a whole.
• Brief your designers: If the primary goal is to secure a registrable mark, communicate to your design team that the graphic element must be original and distinctive, not merely a polished presentation of text.

Key Takeaway

The belief that a logo can “save” a descriptive word is one of the most costly misconceptions in German trade mark practice. The DPMA requires that the figurative element make an independent, meaningful contribution to the overall distinctiveness of the mark. Minimal font changes, simple borders, and standard imagery do not meet this standard. Applicants who need to protect descriptive terms should invest in genuinely original graphic design or pursue registration through acquired distinctiveness.