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Thursday, 19 March 2015

Acronyms in descriptive composite marks: how to handle them when comparing marks

Last week Advocate General Mengozzi gave his Opinion in Case C-20/14 BGW Marketing - & Management- Service GmbH v Bodo Scholz [available so far in 17 EU official languages, but not English, notes Merpel] on the interpretation of Article 4(1)(b) of Directive 2008/95, following a request by the Bundespatentgericht (German Federal Patent Court) to the Court of Justice of the European Union (CJEU) for a preliminary ruling.

The underlying dispute concerned an application, based on the earlier word and figurative  BGW marks (the latter displayed below, right) registered for goods and services in Classes 16, 35, 41, 43, to cancel the later registration of the word mark BGW Bundesverband der deutschen Gesundheitswirtschaft (meaning 'National Federation of German companies in the health sector') for goods and services in Classes 16, 35, 41. 

The German Federal Patent Court, diverging from the German Patent and Trade Mark Office's appeal decision, found that there existed a likelihood of confusion with the disputed mark, in relation to identical goods, namely 'printed products', and with both identical and similar services, namely 'advertising services, 'organization of seminars' and 'organization of competitions' insofar as they were provided to businesses operating in the health sector, in particular for optical and acoustic equipment stores. However, the referring Court asked whether 
'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?'
There were two main issues which gave rise to the German Court's doubts.

First, what role did the acronym BGW play within the composite mark BGW Bundesverband der deutschen Gesundheitswirtschaft, given that BGW consisted the capital letters at the head of the mark? In the light of the German case-law, the word combination was descriptive of the goods and services for which protection was sought, said the Court, while 'BGW' had an independent distinctive role within the composite mark, applying the CJEU's reasoning in Case C-120/04 Medion.

However, said the Court, according to the Strigl and Securvita references (Joined Cases C-90/11 and C-91/11), BGW would be perceived by the relevant public as an abbreviation of the word combination included in the composite mark –- reproducing the initial letters of the word combination [note for English readers who wonder why 'Bundesverband der deutschen Gesundheitswirtschaf' comes out as BGW, not BDG: presumably the "w" relates to the second half of the portmanteau word Gesundheitswirtschaf] -- and to be placed in a subsidiary position: being an acronym, it had no meaning outside the context of the words for which it stood. Accordingly, if the words in question had no independent distinctive role, their acronym presumably couldn't have one either.

Secondly, wondered the Court, how did Strigl and Securvita apply here, this being a case involving the absolute grounds for refusal of lack of distinctiveness and descriptive character of a mark, not the likelihood of confusion. Here the Court held that the relevant public's perception of a mark cannot vary, depending on the type of grounds for refusal. So, provided that absolute and relative grounds serve different purposes -– the protection of (i) a general interest and of (ii) the individual trade mark holder -- the AG stated that the relevant public has only one overall impression of the mark -- but that, for absolute grounds of refusal of registration the focus is on possible connections between the mark or its components and the goods and services covered while, for relative grounds, the focus is on the process of memorization, evocation and association between the two conflicting marks. As the AG observed, those perspectives are usually interrelated but they remain independent.

AG Mengozzi concluded that Strigl and Securvita could not apply in the present case, given the different factual and legal framework together with the empirical analysis. On the contrary he felt that it was better to apply the CJEU’s case-law in Medion to answer the question of the referring Court.

Why does the reasoning in Strigl and Securvita fall out of the scope of this request for a preliminary ruling? AG Mengozzi emphasised that, in those cases, the acronyms were found to occupy a subsidiary position in relation to the word combinations they represented.  This followed from the public’s perception of the existence of a link between those acronyms and the word combinations, in which they were recognised as being abbreviations within the composite marks. 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 subsidiary position had any bearing as for the likelihood of confusion examination.

How come that Medion sets the guidelines to assess the likelihood of confusion between the BGW and BGW Bundesverband der deutschen Gesundheitswirtschaft marks?

The premise was, as usual, that the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case, on the bases of both (i) the overall impression conveyed by the mark, taking into account their distinctive and dominant components, and (ii) the public’s perception in relation to the goods and services concerned. In any event, 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.

Independent dominant position
 AG Mengozzi applied Medion to the present case, in that it was necessary to establish whether the reproduction of the earlier BGW mark in its entirety in the later composite mark covered an independent distinctive position within the composite mark or whether, together with the word combination, it constituted a separate logical unit with its own distinctiveness due to the interdependence between the acronym and the word combination.

In this regard, said the AG, in the assessment of the likelihood of confusion the CJEU would have to take into account who the relevant public is and what type of attention it pays, what types of goods and services are involved, the position of BGW in the later mark, the descriptiveness of the Bundesverband der deutschen Gesundheitswirtschaft word combination, the link between the components of the composite mark, the possibility that the public immediately perceive BGW as the acronym for the word combination in question and how this interdependence affects the evocation of the earlier BGW mark.


If the acronym BGW, common to both marks, should be devoid of an independent distinctive role it would not influence the public’s perception of the composite mark as to determine its overall impression and to create the likelihood of confusion with the earlier BGW mark. It would, all in all, be logical to establish the likelihood of confusion insofar as the public is aware of the existence of the earlier BGW mark and ascribes to it the same meaning as that of the later mark and, therefore, associates it with the same commercial origin.

12 comments:

Anonymous said...

Can't believe I'm the first. But... BGW isn't an acronym. An acronym has to form a word by taking the initial letters of a group of words e.g. Laser or scuba. Try pronouncing BGW (except maybe in Welsh?).

Jeremy said...

Merriam-Webster, Inc. Merriam-Webster's Dictionary of English Usage, 1994. ISBN 0-87779-132-5. pp. 21–22:
acronyms A number of commentators (as Copperud 1970, Janis 1984, Howard 1984) believe that acronyms can be differentiated from other abbreviations in being pronounceable as words. Dictionaries, however, do not make this distinction because writers in general do not:
"The powder metallurgy industry has officially adopted the acronym 'P/M Parts'"—Precision Metal Molding, January 1966.
"Users of the term acronym make no distinction between those pronounced as words ... and those pronounced as a series of characters" —Jean Praninskas, Trade Name Creation, 1968.
"It is not J.C.B.'s fault that its name, let alone its acronym, is not a household word among European scholars"—Times Literary Supp. 5 February 1970.
"... the confusion in the Pentagon about abbreviations and acronyms—words formed from the first letters of other words"—Bernard Weinraub, N.Y. Times, 11 December 1978.
Pyles & Algeo 1970 divide acronyms into "initialisms", which consists of initial letters pronounced with the letter names, and "word acronyms", which are pronounced as words. Initialism, an older word than acronym, seems to be too little known to the general public to serve as the customary term standing in contrast with acronym in a narrow sense.

Anonymous said...

I like the TLS one - if you can call J.C.B. a word, I suppose anything is an acronym.

Anonymous said...

Once and for all, the reason it is not in English yet might be or in all likelihood is due to a lack of resources as there are not enough native English speakers at the Court (or anywhere) who are skilled in other languages and who can proof read and correct. That is the last leg of the process.

Now you may say in the interests of speed and so that monolingual English professionals can read the opinions, judgments in English that the Court should farm this work out to non native speakers of English who can no doubt do it but that will be to the detriment of English language versions in general. So it is in your interests to wait for the English version which sometimes, it is true does not appear.

Merpel McKitten said...

Anonymous at 20:37 When I noted that the text of this decision was not available in English, I did so as a courtesy to our readers, many of whom -- particularly those from Asian countries -- are proficient in no European language other than English.

For the record, this blogpost was composed without the need to resort to an English version of the text. It was authored by our guest Kat Valentina Torelli, an Italian lawyer who practises in Spain and who can cope with French as well as English.

Anonymous said...

Well, if we are going to be nit-picking, "Gesundheitswirtschaf" means "health-landlord's sheep", whereas just a final "t" would have made it clear that it is business or economy.

Kind regards,


George Brock-Nannestad

(no need to publish!)

Anonymous said...

The individual blog entry is one thing but it is a consistent policy of the IPKAT to criticise the absence of a rapidly churned out English version of Court judgments and opinions.

The point was that waiting for it leads to a better end product.

Jeremy said...

Thanks, Anonymous at 10:35 am, for clarifying your point.

It is indeed a consistent policy of the IPKat to criticise the absence of an immediately available English version of CJEU and General Court decisions and AG Opinions.

I'm not sure why an English translation that appears at the time the text is placed online is, or should be, any more "rapidly churned out" than the versions that are made available in other languages, for example Maltese, Czech or Finnish -- or, for that matter French or German.

The IPKat's point is that the decisions of the CJEU and General Court are not just there for academics to ponder on. They are part of a vital web of current legal information on which commercial decisions are made, businesses rely and which lawyers strive to explain to their clients. For example, reasoning in a Community trade mark opposition decision might be of immediate relevance to proceedings relating to national versions of the same mark in EU member states -- or to strategic issues such as whether to appeal or to apply to stay proceedings before one tribunal pending the outcome of a dispute in another one. Without a reliable and relatively authoritative translation it can be difficult to make the right decisions, and judges in national courts may be asked to accept one party's translated version of a case in preference to another's.

It's not because English is English that the IPKat raises this issue. It's because it's a major language of international trade, used and relied upon by businesses and investors in the US and other major jurisdictions outside the EU such as India.

In case you ask, the IPKat believes that the same considerations apply to the provision of authoritative translations into French and Spanish, at the very least.

Anonymous said...

There is no occasion when it is not published in French immediately. Leaving aside the Court, the working languages of the other institutions are French, German and English and regrettably not Spanish.What you can end up with at the moment is good French and German documents written by native speakers and not up to the mark English written by non native speakers. Odd formulations here and there which give the game away. Do you want those versions which can be churned out quickly or do you wish as a nation to invest in foreign language training for native speakers of English? It will give young British people jobs.

In any event, everything you say only points to why it is worth waiting for the authoritative English version which does tend to come out later, if at all.

Jeremy said...

Thanks, Anonymous of 12:28, for your comment (are you also the Anonymous of 10:35?)

I think you are missing the point. There are far more English-speakers outside the European Union than inside it, and there are plenty of people with the necessary language translation skills. What is needed is the appointment of more translators.

Anonymous said...

There are regrettably not plenty of people with the language skills. There are plenty of non native speakers who do speak English well but that was not originally the job description but it might become so. For court judgments, you expect a certain standard as you do for legislation (don't start).There is a crisis in recruitment of native speakers of English as translators. Certain institutions are faced with many translators and interpreters coming up to retirement and it will get worse as they are not being replaced. What is needed is the appointment of native speakers as translators and for that one relies on the MS to produce them (only EU nationals can work at the institutions). Failing which and there is a clear failure to produce them in the general education system, and the resources for bespoke training are now scarce, one has no choice but to wait until the stretched translators can manage. The alternative is to move to "English as a second language translation into English" model. This is beginning to happen and it is a second best option.

Anonymous said...

The problem about English is that "many English consider learning a foreign language as flamboyant as wearing a crown in a bus"...

when you say "It's not because English is English that the IPKat raises this issue. It's because it's a major language of international trade, used and relied upon by businesses and investors in the US and other major jurisdictions outside the EU such as India. "... are you sure there is anyone out there who believes you ?

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