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
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
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
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
A decision on likelihood of confusion will now be made by the
German Federal Patents Court.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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