Abbreviation held to be descriptive of insurance services

European Union
In Deutsche Betriebskrankenkasse (Deutsche BKK) v Office for Harmonization in the Internal Market (OHIM) (Case T-289/08, February 11 2010), the General Court has upheld a decision of the Board of Appeal of OHIM in which the latter had refused to register the mark DEUTSCHE BKK on the grounds that it was descriptive.
On April 11 2005 Deutsche Betriebskrankenkasse (Deutsche BKK), a German public corporation, applied to register DEUTSCHE BKK as a Community trademark for services in Classes 36, 41 and 44 of the Nice Classification (including insurance services). The OHIM examiner rejected the application on the grounds that the mark was descriptive, holding that, in Germany, 'BKK' would be easily understood by the relevant public - in this case, the general public - as the abbreviation of 'Betriebskrankenkasse', which used to refer to a health insurance scheme for a particular undertaking. The examiner took the view that the addition of the geographic term 'Deutsche' did not render the trademark registrable. The mark, perceived as a whole, would be nothing more than the combination of two easily understandable descriptive terms. The Board of Appeal of OHIM affirmed and the applicant appealed to the General Court.
An interesting aspect of the case was that, following a recent reform of health insurance in Germany, all health insurance companies may sell their policies to everybody, so that the institution of Betriebskrankenkasse no longer exists. Thus, the term 'Betriebskrankenkasse', or its abbreviation BKK, refers to a historical institution. The General Court had thus to decide whether a term which refers to something that no longer exists can still be descriptive.

The court held that the fact that the term 'Betriebskrankenkasse', or the abbreviation BKK, referred to an institution that no longer existed did not change the conclusion that the mark DEUTSCHE BKK was descriptive, because the average consumer would still associate it with insurance. This raises the question of how long a term will remain descriptive of something that has been abolished.
The case was further complicated by the fact that the mark did not cover only insurance services in Class 36, but also services in Classes 41 and 44 (mainly health services). The OHIM examiner had held that the mark was descriptive for all the services concerned, even though it is difficult to imagine how the abbreviation BKK could have a meaning for the average consumer of unrelated services. Nevertheless, the General Court confirmed the findings of the examiner. Interestingly, the court held that the mark would also be descriptive of the other services because the applicant had not restricted its trademark application to health services in Classes 41 and 44. One may wonder whether the mark would have been registered in Classes 41 and 44 if the application had been restricted.
The applicant also argued that its mark had acquired distinctiveness. For this purpose, it submitted advertising material taken from its website and an opinion survey.

The court first held that advertising material from a website could not be compared to an advertising campaign, because it is available only to persons who, upon their own initiative, access the website. Moreover, the applicant had failed to prove the number of internet users who had accessed its website. The court also differentiated between advertising aimed at the general public and advertising aimed at individuals who already had insurance policies with the applicant.
Finally, the court pointed out that the opinion survey submitted by the applicant targeted only businesses, and not the general public. The court highlighted that, in order to establish acquired distinctiveness in the insurance industry, the applicant had to prove that the mark had acquired a distinctive character for the general public, and not only among a circle of selected businesses. Moreover, 20% of the businesses concerned were not aware of the mark, and 25% did not consider that the mark referred to the commercial origin of the services.

The action was thus dismissed.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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