Case C-20/14 BGW Marketing & Management Service GmbH v Bodo Scholz, Court of Justice of the European Union (CJEU), Opinion of Advocate General (AG) Mengozzi, 12 March 2015
Journal of Intellectual Property Law & Practice (2015) doi: 10.1093/jiplp/jpv109, first published online: June 21, 2015
The Advocate General provides guidance on how to assess a likelihood of confusion with regard to acronyms included in descriptive composite trade marks, holding that the guidance of the Court of Justice of the European Union in Medion (C-120/04, EU:C:2005:594) is applicable.
Under the heading ‘Further grounds for refusal or invalidity concerning conflicts with earlier rights’, Article 4(1)(b) of EU Directive 2008/95 provides that a trade mark:
shall not be registered or, if registered, shall be liable to be declared invalid: if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark.Articles 3(1)(b) and (c) of the Directive provide that:
the following shall not be registered or, if registered, shall be liable to be declared invalid:… (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services.Facts
The opposition went through several instances and ended in the German Federal Patent Court, which found that there was a likelihood of confusion between the marks in relation to identical goods in class 16 (printed products) and identical and similar services in classes 35 and 41 (advertising services, organization of seminars and organization of competitions), insofar as these were provided to businesses operating in the health sector. In this context, the Bundespatentgericht wondered about the significance of the acronym BGW at the beginning of the composite mark ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’ (emphasis by the author) when assessing the likelihood of confusion and found that guidance from the Court of Justice of the European Union (CJEU) was potentially conflicting.
German case-law suggested that the word combination (‘Bundesverband der deutschen Gesundheitswirtschaft’) was descriptive of the goods and services covered, while the acronym ‘BGW’ either dominated the overall composite mark or at least retained an independent distinctive role within in, in accordance with the CJEU's guidance in Medion (C-120/04, ECLI:C:2005:594), where the court had held that:
… beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element (para 30).However, the German judges found that matters were not quite as clear-cut, in light of potentially conflicting guidance provided in other CJEU decisions, namely Joined Cases Strigl (C-90/11, EU:C:2012:147) and Securvita (C-91/11, EU:C:2012:147) which concerned the registrability of the signs ‘Multi Markets Fund MMF’ and ‘NAI - Der Natur-Aktien-Index’ as trade marks. Notably, these cases related to absolute grounds for refusal of a trade mark due to a lack of distinctiveness and descriptiveness under Articles 3(1)(b) and (c) of the Directive, rather than relative grounds for refusal under Article 4(1)(b). The German court was particularly concerned with the direction provided in paras 32 and 38:
… in each of the two cases, the three capital letters at issue, that is to say, ‘MMF’ and ‘NAI’ respectively, represent the initial letters of the word combinations to which they are attached. Thus, the word combination and the letter sequence, in each case, are intended to clarify each other and to draw attention to the fact that they are linked. Each letter sequence is therefore designed to support the relevant public's perception of the word combination, by simplifying its use and by making it easier to remember. …Applying this guidance, the court found that it was in conflict with the precedent in Medion, if the ‘BGW’ element only assumed an ancillary position in relation to the word combination, then it was illogical to assume that it could at the same time dominate the mark's overall impression and/or retain an independently distinctive role within the overall composite mark. Ultimately, this would lead to the result that there could be no likelihood of confusion between BGW and ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’, a conclusion with which the German court did not agree. However, the court also found that the relevant public's perception of a mark cannot vary depending on the type of grounds for refusal, and decided to suspend its proceedings and refer the question to CJEU for further guidance in a preliminary ruling.
On the contrary … the letter sequence which reproduces the initial letters of the words comprising that word combination occupies only an ancillary position in relation to the word combination. As the referring court suggests, each of the letter sequences at issue, although not descriptive when considered in isolation, may be descriptive when combined, within the mark at issue, with a principal expression, which itself is descriptive as such, of which it is perceived to be an abbreviation.
The court referred the following question to the CJEU:
In the case of identical and similar goods and services, there may be taken to be a likelihood of confusion for the public if a distinctive sequence of letters which dominates the earlier word/figurative trade mark of average distinctiveness is made use of in a third party's later mark in such a way that the sequence of letters is supplemented by a descriptive combination of words relating to it which explains the sequence of letters as an abbreviation of the descriptive words?Advocate-General's Opinion
Advocate-General Mengozzi's Opinion in essence agreed with the German Federal Patent Court's underlying conclusion that the guidance in Medion was applicable, whereas the precedents in Strigl and Securvita did not apply in the present case, particularly due to the different factual and legal framework of Articles 3 and 4 of the Directive. Inter alia, conducting an empirical analysis, AG Mengozzi took the view that, in Strigl and Securvita, the acronyms occupied an ancillary position in relation to the word combinations they represented. This followed from the public's perception of the existence of a link between the acronyms and word combinations, in which they were recognized as abbreviations. In view of this interdependence between the marks' mutually descriptive components, the AG concluded that the acronyms' potential distinctiveness could not be passed on to the marks as a whole and excluded the possibility that their ancillary position had any bearing on the likelihood of confusion examination.
AG Mengozzi further explained that, as usual, the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case, on the basis of the overall impression conveyed by the marks, bearing in mind their distinctive and dominant components, as well as the public's perception in relation to the goods and services covered. Moreover, the assessment of the likelihood of confusion can be determined in connection with the mark's dominant component only when all other components are negligible. Applying Medion, the AG held that it was crucial whether the earlier BGW mark retained an independent distinctive position within the later composite mark or whether the acronym BGW represented a separate logical unit with its own distinctiveness due to the interdependence between the acronym and the word combination ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’.
When assessing the likelihood of confusion between ‘BGW’ and ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’, the AG took the view that the CJEU would have to take several factors into consideration: (i) the relevant public and its level of attention, (ii) the nature and types of goods and services involved, (iii) the position of the acronym BGW in the later mark, (iv) the descriptiveness of the word combination ‘Bundesverband der deutschen Gesundheitswirtschaft’, (v) the likelihood that the relevant public would immediately interpret BGW as acronym for the word combination, (vi) the ‘link’ between the components of the composite mark and (vii) how this interdependence would affect how the earlier BGW mark would be recalled in the mind of the consumer.
The German Federal Patent Court's reference is not just of academic relevance but could have potentially far-reaching effects on the assessment of a likelihood of confusion as outlined by the AG in his opinion: if the acronym, which is shared by both marks, is devoid of an independent distinctive role within the composite mark, it cannot at the same time influence the public's perception of the composite mark and its overall impression. Consequently, it will then be unable to cause a likelihood of confusion with the earlier BGW mark. However, a likelihood of confusion would logically have to be assumed where the relevant public is aware of the existence of the earlier BGW trade mark and interprets it to have the meaning the later mark and, thus, associates it with the same commercial origin.
While the AG's opinion is logical, it will have to be seen whether the CJEU will follow his reasoning to the last detail, notably whether a likelihood of confusion may only have to be assumed where relevant public interprets the earlier acronym mark as having the same meaning the later mark. Conceivably, consumers may recall the earlier trade mark and may not necessarily believe it to have the same meaning as the later composite mark and nonetheless be confused.