Case C-20/14, BGW Marketing- & Management-Service – a trade marked dominant sequence of letters [judgment 2015, ECLI:EU:C:2015:714]

Where an earlier trade mark protects the letter sequence ‘BGW’ and it is used in the German health care sector, is there a likelihood of confusion with a later mark that is registered as ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’ where this later mark is also used in the German health care sector but where the letters BGW in the later mark are just an abbreviation for unregistrable descriptive words?

Facts
In May 2006, the German Federal Association for Businesses in the Healthcare Sector applied to the German Patent and Trade Mark Office to register ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’ as a word mark in Classes 16, 35, 41 and 43.

However, the application was opposed. An earlier word/figurative mark, consisting of the letters ‘BGW’ set inside a black square, had been registered back in 2004 by BGW Marketing- & Management-Service, and that mark covered similar goods and services, namely, Classes 16, 35, and 41.

In 2009, the German Patent and Trade Mark Office initially upheld the opposition. It found that there was a likelihood of confusion because although the word combination Bundesverband der deutschen Gesundheitswirtschaft was descriptive for the goods and services, the ‘BGW’ element played an independent role within that mark.

Following an appeal, the German Patent and Trade Mark Office decided in 2012 to overturn its initial 2009 decision in part because of its finding that, on the balance of probabilities, the earlier mark had not been used.

A further appeal was made, this time to the German Federal Patent Court, the Bundespatentgericht.

At the German Federal Patent Court
BGW Marketing- & Management-Service showered the Federal Patent Court with a considerable volume of evidence as to the earlier mark’s use.

The three judges sitting as the 30th Chamber of the Federal Patent Court (which is specialised in trade mark oppositions), decided that the earlier mark had been used at least in so far as publications and advertising services were concerned. This was because the goods and services had been provided ostensibly to companies in the healthcare sector such as opticians and hearing specialists.

Their finding meant that here was a dispute in which both marks could be on the market and used on the same goods, and for the same or similar services.

Resolving the dispute would therefore turn on the correct interpretation being given to the EU’s trade mark Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks (Codified version) [OJ [2008] L299/25–33].

Article 4 of the Directive sets out ‘Further grounds for refusal or invalidity concerning conflicts with earlier rights’. And Article 4(1)(b) provides:

1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:
…
(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

In that context, the German Patent Court noted that there was a trio of salient case law which had been produced by the CJEU. When unpacked, this case law reads as follows.

In Case C-254/09 P, Calvin Klein Trademark Trust, the CJEU had held:

45 It is also apparent from settled case-law that the global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, inter alia, SABEL, paragraph 23; Lloyd Schuhfabrik Meyer, paragraph 25; Medion, paragraph 28; OHIM v Shaker, paragraph 35; and Case C‑206/04 P Mülhens v OHIM [2006] ECR I‑2717, paragraph 19).

Nevertheless, that was not the only case law. And when it came to the dominance of one component, the CJEU had reasoned in C-498/07, Aceites del Sur-Coosur SA:

62 In that regard, the Court has also held that, according to established case-law, the overall impression created in the mind of the relevant public by a complex trade mark may, in certain circumstances, be dominated by one or more of its components. However, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraphs 41 and 42, and Case C‑193/06 P Nestlé v OHIM [2007] ECR I-114, paragraphs 42 and 43 and the case-law cited).

And in C-120/04, Medion AG, the CJEU had elaborated further that:

28 The global appreciation of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, in particular, SABEL, paragraph 23, Lloyd Schuhfabrik Meyer, paragraph 25, and Matratzen Concord, paragraph 29).

29 In the context of consideration of the likelihood of confusion, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see Matratzen Concord, paragraph 32).

30 However, beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element.

Applying that trio of cases and attendant CJEU reasoning would lead to the following result. When it came to the overall impression of the earlier word/figurative mark, this was dominated only by the letter combination ‘BGW’. Uttering the letter combination did not lead to an a priori expression of the figurative mark. Visually, the black square surrounding the letters BGW was a very simple graphic and served only to emphasise the letters ‘BGW’.

When it came to the more recent mark of ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’, apart from the letters ‘BGW’ the rest was descriptive. Thus, the overall impression of the more recent mark was dominated by the letter combination ‘BGW’. Even if the words were not completely ignored, then the prefixed ‘BGW’ letter combination would at least need to have an independent distinctive role within the later mark. Furthermore, the Federal Patent Court also acknowledged that the use of the earlier mark was in the same sector of the economy so that the relevant public would recognise the earlier mark BGW, albeit clarified by the descriptive information Bundesverband der deutschen Gesundheitswirtschaft. Thus, there was a likelihood of confusion between the marks.

However, the German Patent Court felt unable to decide and dispose of the case because of yet another judgment from the CJEU, namely Joined Cases C-90/11 and C-91/11, Alfred Strigl. In that case, the CJEU had been faced with the registration of these expressions as trade marks: ‘Multi Markets Fund MMF’, and ‘NAI— Der Natur-Aktien-Index’.

The Strigl Problem
Admittedly, the Strigl case was not directly on point. The CJEU in Strigl was not interpreting Article 4(1)(b) of the Directive, which was at stake here in BGW, but rather Article 3 of the Directive which is all about the grounds for refusal or invalidity of a trade mark. Nevertheless, the Federal Patent Court noted that that by itself should not matter because the public’s assessment of a trade mark should not depend on such legal niceties. Consequently, Strigl was relevant.

In that context, Article 3 (1)(b) and (c) of the Directive provide:

(1)The following shall not be registered or, if registered, shall be liable to be declared invalid:
…
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services; …

The CJEU in Strigl had rather intricately reasoned that: Article 3(1)(b) and (c) had to be interpreted as applying to a word mark consisting of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself – where the relevant public perceives that sequence as being an abbreviation of that word combination by reason of the fact that it reproduces the first letter of each word of that combination, and if the mark in question, considered as a whole, can thus be understood as a combination of descriptive indications or abbreviations which is therefore devoid of distinctive character.

Two particular paragraphs of the CJEU’s reasoning in Strigl were of concern to the German judges. Namely,

32 In the main proceedings, it must be noted that, in each of the two cases, the three capital letters at issue, that is to say, ‘MMF’ and ‘NAI’ respectively, represent the initial letters of the word combinations to which they are attached. Thus, the word combination and the letter sequence, in each case, are intended to clarify each other and to draw attention to the fact that they are linked. Each letter sequence is therefore designed to support the relevant public’s perception of the word combination, by simplifying its use and by making it easier to remember.

…

38 On the contrary, as the Advocate General has noted in point 56 of his Opinion, the letter sequence which reproduces the initial letters of the words comprising that word combination occupies only an ancillary position in relation to the word combination. As the referring court suggests, each of the letter sequences at issue, although not descriptive when considered in isolation, may be descriptive when combined, within the mark at issue, with a principal expression, which itself is descriptive as such, of which it is perceived to be an abbreviation.

The three judges of the Federal Patent Court understood those two paragraphs to say that because the element only assumes an ancillary position it would be impossible to attribute a dominant or at least an independently distinctive role to the letter combination BGW found in the later mark, namely the ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’. Linguistically, a merely ancillary element could never dominate the overall impression or take an independently distinctive role, particularly when both elements of the mark (the letter sequence and its descriptive explanation) serve to emphasise their underlying relationship. The inevitable result would be that the signs would not correspond, and therefore there could be no question of there being a likelihood of the signs being confused – and that was a result with which the German Patent Court disagreed.

Judges Hacker, Winter and Jacobi decided to make a reference to the CJEU.

Question Referred
According to the UK Intellectual Property Office’s website, the German Federal Patent Court has asked:

1. Concerning the interpretation of Article 4(1) (b) of the Trade Mark Directive. The Court asks whether, in the case of identical and similar goods and services, there may be taken to be a likelihood of confusion if a distinctive sequence of letters which dominates an earlier word/figurative trade mark in such a way that the sequence of letters is supplemented by a descriptive combination of words relating to its which explains the sequence of letters as an abbreviation of the descriptive words.