BGW Beratungs-Gesellschaft Wirtschaft mbH applied to invalidate Mr Scholz's German trade mark registration of the word mark BGW Federal Association of Health Industry on the basis of its above earlier German trade mark left. That succeeded as against all the overlapping classes 16, 35 and 41.
On appeal, it was found that there was not sufficient proof of genuine use of the earlier BGW mark. That was then appealed to the Federal Patents Court, which found that there was proof of use.
The earlier court had found that the words 'Federal Association of Health Industry in Germany' was merely descriptive and completely devoid of distinctive character. In a double whammy, the Federal Patents Court also applied the Medion principle (C 120/04, EU:C:2005:594), establishing that 'BGW' played an independent distinctive role in the later mark.
The court had all it needed to find a likelihood of confusion but was concerned about a precedent set in Strigl and Securvita (C 90/11 and C 91/11, EU:C:2012:147) whereby an acronym in combination with descriptive words was found to be completely devoid of distinctive character and declared invalid. Could 'BGW' merely be perceived as an abbreviation of Bundesverband der deutschen Gesundheitswirtschaft? If so, does it make any difference? Any opportunity for a claim on absolute grounds (that the mark should never have been registered) had long past in the subject proceedings. It was therefore left to be decided what effect an acronym scenario would have on the likelihood of confusion test.
This question was referred to the CJEU for a preliminary ruling.
The court stated that consideration of (1) a descriptive mark's registrability and if it should therefore be freely available to others, and (2) whether there is likelihood of confusion for the purposes of protecting an earlier mark, are two separate issues. Different mental processes in the consumer are involved and assessed. The relevant Articles of the Directive are for different purposes.
If it were the case that the later mark was considered to be descriptive or completely devoid of distinctive character such that it should not have been registered, it is difficult to see how the court could make such a clean cut between registrability and likelihood of confusion. A totally descriptive mark which should be excluded from registration, freely available to be used by others, should by definition not infringe an earlier mark on a likelihood of confusion test (where there is no enhanced reputation in the earlier mark). To take this into consideration in invalidity, opposition or infringement proceedings, on relative grounds, would require a court to make a decision on a mark's registrability, and there has been reluctance in the past for courts to do this.
The Court finished by saying that the national court would have to consider that if the consumer would perceive the later mark as an acronym, whether an association could form between it and the earlier mark. In other words, even if a mark consists of an acronym followed by descriptive words, and would perhaps be unregistrable in Strigl, there may still be a likelihood of confusion.
A decision on likelihood of confusion will now be made by the German Federal Patents Court.
C-20/14
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