ECJ rules on registrability of marks consisting of word combination and abbreviation
In Strigl v German Patent and Trademark Office and Securvita Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH v Öko-Invest Verlagsgesellschaft mbH (Joined Cases C-90/11 and C-91/11, March 15 2012), a reference for a preliminary ruling by the German Federal Patent Court, the Court of Justice of the European Union (ECJ) has considered the registrability of word marks consisting of a word combination and a sequence of letters identical to the initial letters of those words. The main proceedings involved the trademarks MULTI MARKETS FUND MMF and NAI – DER NATUR-AKTIEN-INDEX.
There is inconsistency within Europe as to whether trademark protection should be refused or granted for word signs which consist of a descriptive word combination (eg, 'Multi Markets Fund' and 'Der Natur-Aktien-Index') and a non-descriptive letter sequence (eg, 'MMF' and 'NAI'), if the relevant public perceives the letter sequence as an abbreviation of the descriptive words because it reproduces their initial letters, and the trademark as a whole can thus be understood as a combination of mutually explanatory descriptive indications or abbreviations. The German Federal Patent Court decided to suspend the proceedings and referred the issue to the ECJ. The ECJ joined the cases.
The ECJ first stated that Articles 3(1)(b) and (c) of the Trademarks Directive (2008/95/EC) must be interpreted as meaning that trademark protection should be denied for word marks consisting of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself, if the relevant public perceives this sequence only as an abbreviation of the descriptive word combination because it reproduces the first letter of each word of the combination. In this case, the trademarks considered as a whole could be understood only as a combination of descriptive indications or abbreviations and, therefore, were devoid of any distinctive character.
In coming to this conclusion, the ECJ took the following approach:
- First, the descriptive character must be assessed in relation to each single element. This does not mean that each single word has to be examined separately, as a word combination may counts as a single element.
- Second, the descriptive character must be assessed in relation to the mark as a whole.
This assessment must take into account the goods and services applied for.
Following these two steps, the ECJ first found that the word combinations 'Multi Markets Funds' and 'Natur-Aktien-Index' were clearly descriptive for financial services in Class 36 and were thus devoid of any distinctive character. In contrast, the letter sequences 'MMF' and 'NAI' themselves are not descriptive. However, when considering the trademarks as a whole, it is evident that the letter sequences 'MMF' and 'NAI' only reproduce the first letters of the descriptive word combinations 'Multi Markets Funds' and 'Natur-Aktien-Index', and that they occupy an ancillary position. The word combinations and the letter sequences were clearly linked and used to identify each other. The letter sequences were used only to accentuate the word combinations, which were clearly descriptive. Whether the letter sequence was at the beginning of the word mark or at the end was irrelevant.
Applicants must be cautious when deciding on the wording of a trademark. A letter sequence which itself is not descriptive - and thus registrable - might become descriptive when added to a descriptive word combination. However, a letter sequence will not automatically become descriptive when added to a word combination: this will be the case only where the word combination is used to clarify the letter sequence, but not where there is no link between the word combination and the letter sequence.
Tanja Hogh Holub, Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Munich
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