The matter at hand
On the basis of its word/device mark for BGW, BGW invoked the invalidity of the German word mark ‘BGW Bundesverband der deutschen Gesundheitswirtschaft’. The German Federal Patents Court considered that there is a likelihood of confusion between the marks at issue on the part of the relevant public.
However, with reference to Strigl and Securvita (C‑90/11 and C‑91/11), the referring court considered that the absolute ground for refusal of Article 3(1)(b) and (c) of the Trade Mark Directive is applicable to composite marks consisting of a descriptive word combination (i.e. ‘Bundesverband der deutschen Gesundheitswirtschaft’) attached to its acronym (i.e. ‘BGW’), if the relevant public perceives that acronym as being an abbreviation of that descriptive word combination. In light of this, the referring court raised the question of whether this also applies to the relative ground of refusal of Article 4(1)(b) of Trade Mark Directive, where the later mark has these characteristics.
The judgment of the ECJ
With reference to established case-law, the ECJ first considers that “the absolute grounds for refusal of registration set out in Article 3(1)(b) and (c) of the Trade Mark Directive and the relative grounds for refusal of registration set out in Article 4(1)(b) of that directive pursue different aims and are intended to protect distinct interests.” (paragraph 23). In this regard it is considered that “whereas, in assessing the descriptiveness of a sign, attention is focused on the mental processes which may lead to relationships being established between the sign or its various components and the goods/and or services concerned, in assessing the likelihood of confusion, the examination relates to the processes by means of which the sign is remembered, recognised and recalled and to associative mechanisms.” (paragraph 28).
Based on these considerations, it is found that “in the light of the different legal context of the cases which gave rise to the judgment in Strigl and Securvita […], the findings in it are not capable of being applied to the main proceedings for the purposes of assessing whether there is a similarity between the two marks at issue.” (paragraph 34). In the main proceedings, “the national court will have to examine […] whether the links which the relevant public may establish between the letter sequence and the word combination, in particular the possibility that the former may be perceived as an acronym of the latter, are such that that sequence may be perceived and remembered separately by the relevant public in the later mark.” (paragraph 43).