Complex Trade Mark: Does Reproduction of an Essential Element Suffice to Constitute Infringement?

Imagine a brewer from Orthez who launches a craft beer with, on the label, a view of the city ramparts. A competitor uses a similar drawing, but adds other elements. How far does the protection of your trade mark extend? Can a single figurative element be copied without risk?

This is precisely the question the French Supreme Court decided in 1968 in a landmark case opposing two Alsatian breweries over the image of Strasbourg Cathedral. The decision sets out a key principle: for infringement to exist, the reproduced element must be essential, distinctive and characteristic of the original trade mark. In the absence of specification in the registration, it is for the judge to decide.

This case law is of interest to any owner, creator or user of a trade mark: it defines the scope of your exclusive right. When a competitor uses an element of your logo, are you entitled to sue? The answer depends on the place of that element in your trade mark.

The facts: a story that happens every day

At the heart of the dispute: two Alsatian breweries. The first, Grande Brasserie d'Adelshoffen, markets a beer under the trade mark “Munster Brau”. Its labels feature a vignette depicting Strasbourg Cathedral, surrounded by other motifs (hop leaves, shields, etc.). The second brewery, a competitor, also uses a representation of the cathedral in its advertising, but with different graphic elements.

Grande Brasserie d'Adelshoffen sues its competitor for trade mark infringement. It argues that the image of the cathedral is the distinctive element of its complex trade mark, and that its reproduction, even partial, constitutes infringement. The competitor replies that the registered trade mark comprises several elements, and that the cathedral is merely one ornament among others.

The court of appeal rules in favour of the competitor: it holds that the representation of the cathedral does not constitute an essential element of the “Munster Brau” trade mark. The appeal to the Supreme Court is dismissed on 15 May 1968. The high judges confirm the reasoning of the lower courts: in the absence of indication in the registration document, it is for the judge to freely assess whether the reproduced element is essential, distinctive and characteristic in itself.

The reasoning of the court — dissected

The Supreme Court first recalls the principle: only reproduction of the part or essential parts of a complex trade mark constitutes infringement. It is not because an element appears in the trade mark that it is automatically protected independently. It must be essential, i.e., it must contribute decisively to the identity of the trade mark.

In this case, the registration document did not specify that the cathedral constituted a distinctive element to be protected as such. The trade mark was registered as a whole, without any particular mention. Therefore, the lower court had to assess, “having regard to the conditions of use of the trade mark”, whether the cathedral was an element essential, distinctive and characteristic in itself.

The appeal judges noted that the “Munster Brau” trade mark comprised several verbal and figurative elements, and that the cathedral occupied only a secondary place in the whole. They also took into account usage: the brewery did not highlight the cathedral in its communication, unlike other elements (the name, the colours). The Supreme Court validates this analysis: it could not substitute its assessment for that of the lower courts, since it was reasoned and not contradictory.

The implicit legal basis is Article L. 713-3 of the Intellectual Property Code (formerly the law of 31 December 1964), which defines infringement by reproduction of the trade mark. The decision clarifies the concept of “reproduction”: it only covers essential elements, not accessory details.

What this means for you — practically

For the owner of a complex trade mark: you cannot prohibit a competitor from using an element of your trade mark if it does not constitute its core. Example: if you have a logo with a castle, a river and a name, and a competitor only reproduces the river, they may argue that the river is not the essential element. To strengthen your protection, you should register the distinctive element (the castle, for example) separately as a figurative trade mark.

For the competitor or user of a sign: this case law protects you against abusive claims. If you use a common or descriptive element (a landscape, a monument), you can challenge the infringement action by proving that this element is not essential in the opposing trade mark. In Lons, a restaurateur using a photo of the Gave de Pau in his sign could be sued by a hotel chain that registered a trade mark including the Gave. But he could defend himself by showing that the Gave is not the distinctive element of the hotel's trade mark.

For the creator or entrepreneur: be strategic in registration. If you create a logo for your company, identify the most original element and register it alone (figurative trade mark) in addition to the complex trade mark. The cost of an additional registration (around €200) is negligible compared to litigation costs (€5,000 to €15,000 for an infringement trial).

Four tips to avoid this type of dispute

• Identify the key element of your trade mark: before registering, conduct an internal audit. Which element do your customers recognise first? The name, a drawing, a colour? That is the one to protect as a priority.
• Register several trade marks if necessary: one complex trade mark for the whole, and one or more separate trade marks for strong elements (figurative, word, colour). This multiplies your legal weapons.
• Mention in the registration document the element considered essential: if your trade mark has several components, clearly indicate which one is claimed as distinctive. This guides the judge in case of dispute.
• Monitor third-party use of your trade mark: regular monitoring (subscription to a surveillance service, monthly Google search) allows early detection of partial reproductions. The sooner you act, the easier it is to prove the essential nature of the copied element.

Further reading: related case law and developments

This 1968 decision is part of a consistent line of authority. The Supreme Court has reaffirmed this principle on several occasions, notably in a ruling of 13 November 2008 (appeal no. 07-17.822): reproduction of a non-distinctive element of a complex trade mark does not constitute infringement. However, if the element is reproduced identically and constitutes the only memorable element, infringement is established (Cass. com., 5 May 2009, no. 08-14.286).

The current trend is towards stronger protection for well-known trade marks. For famous marks (Coca-Cola, Nike), reproduction of even a secondary element can be penalised if it creates a risk of dilution. But for ordinary marks, the criterion of the essential element remains central.

In the future, with the proliferation of non-traditional trade marks (sounds, holograms), the question of the essential element will arise acutely. Will a judge have to determine whether a musical note is essential in a complex sound mark? The logic of 1968 remains applicable.

Summary and next steps

FAQ:

• Can I sue a competitor who uses an element of my logo? Yes, if that element is essential and distinctive. Otherwise, you risk having your claim dismissed.
• How can I prove the element is essential? Through recognition studies, surveys, use in your communication, absence of other distinctive elements.
• What is the time limit to bring an infringement action? 5 years from knowledge of the facts (limitation period). After that, the action is inadmissible.
• What is the cost of multiple trade mark registrations? Expect €200 to €300 per online registration (INPI). Add lawyer's fees if you use a representative.
• What should I do if I receive a cease-and-desist letter for infringement? Do not panic. Check whether the alleged element is truly essential. Consult a specialised lawyer before responding.

Are you in a similar situation? A first 30-minute consultation with Maître Zakine (€45) can save you months of litigation — and often much more. Book an appointment →