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.