ECJ considers likelihood of confusion between acronyms within composite marks

European Union

In BGW Beratungs-Gesellschaft Wirtschaft mbH v Bodo Scholz (Case C-20/14, October 22 2015), the Court of Justice of the European Union (ECJ) was called upon to give a preliminary ruling, on referral from the German Federal Patent Court, on the risk of a likelihood of confusion under Article 4(1)(b) of the Trademarks Directive (2008/95/EC) between trademarks formed of letter sequences where one sequence is combined with a descriptive term and could be understood as an acronym of that term.

In 2006 the word mark BGW BUNDESVERBAND DER DEUTSCHEN GESUNDHEITSWIRTSCHAFT was registered as a national German trademark in relation to goods and services in Classes 16, 35, 41 and 43 of the Nice Classification. The term means 'German Federal Association for Businesses in the Healthcare Sector'. BGW Marketing & Management Service filed an opposition on the basis of its earlier stylised mark consisting of the letters 'BGW' set inside a black square, covering similar goods and services in Classes 16, 35 and 41.

The opposition was first (partially) upheld and later rejected by the German Patent and Trademark Office. BGW Marketing filed an appeal to the German Federal Patent Court, which stayed the proceedings and referred a question to the ECJ on the assessment of a likelihood of confusion under Article 4(1)(b) of the directive.

The ECJ held that, under Article 4(1)(b) of the directive, in the case of identical or similar goods and services, there might be a likelihood of confusion on the part of the relevant public between an earlier mark of average distinctiveness consisting of a letter sequence, which was distinctive and was the dominant element in the mark, and a later mark which reproduced the letter sequence and to which was added a descriptive combination of words, the initial letters of which corresponded to the letters of the sequence, with the result that the sequence was perceived by the public as the acronym of that combination of words.

The ECJ stressed that it was for the national court to decide on the overall impression made by the later mark and, in the light of that and the circumstances of the case, to assess the likelihood of confusion. So the German Federal Patent Court may be none the wiser.

At least, however, the ECJ provided some guidance. The mere fact that the later mark consisted of a sign reproducing the letter sequence that constituted the only word element of the earlier mark and of a combination of words the initial letters of which corresponded to the sequence could not, on its own, preclude a likelihood of confusion with the earlier mark. The national court would have to examine whether the links which the relevant public might establish between the letter sequence and the word combination, in particular the possibility that the sequence might be perceived as an acronym of the word combination, were such that the sequence might be perceived and remembered separately in respect of the later mark. Similarly, the court would, if necessary, have to assess whether the elements of the later mark, taken as a whole, formed a separate logical unit which had a different meaning from that of the elements taken separately.

It remains to be seen how the German Federal Patent Court will ultimately decide on the likelihood of confusion between the BGW marks at hand. The conclusion for similar cases is, however, that the overall assessment of a likelihood of confusion will vary according to the circumstances of the case.

Florian Traub, Squire Patton Boggs (UK) LLP, London

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