BGW: a pointless reference over a meaningless word?

The Court of Justice of the European Union (CJEU) has given its ruling today in Case C-20/14 BGW Marketing- & Management-Service GmbH v Bodo Scholz, following a request by the German Bundespatentgericht for a preliminary ruling from the CJEU back in January 2014. The question on which the referring court sought guidance was one of those typically non-British ones, being another attempt to fool the world into thinking that likelihood of confusion can be defined into existence by the law rather than being a real-world state of fact:

Must Article 4(1)(b) of Directive 2008/95 [the Trade Mark Directive] be interpreted as meaning that, in the case of identical and similar goods and services, there may be taken to be a likelihood of confusion for the public if a distinctive sequence of letters which dominates the earlier word/figurative trade mark of average distinctiveness is made use of in a third party’s later mark in such a way that the sequence of letters is supplemented by a descriptive combination of words relating to it which explains the sequence of letters as an abbreviation of the descriptive words?

What was this case all about? Back in December 2006 [that's right, this matter started with a trade mark application filed nearly nine years ago], the word mark BGW Bundesverband der deutschen Gesundheitswirtschaft (the 'long mark') was registered in Germany for various goods and services in Classes 16, 35, 41 and 43. BGW challenged that registration, on the basis of its own earlier German word and figurative mark, this being a black-and-white version of the pretty little green mark that appears at the top right-hand corner of this blogpost. BGW's mark was registered in 2004 for goods and services in Classes 16, 35 and 41.

In October 2009, the German Patent and Trade Mark Office partially cancelled the registration of the long mark on account of the existence of a likelihood of confusion between the two marks. On appeal, this decision was set aside in January 2012, on the ground that BGW had not demonstrated use of its mark in such a way as to preserve the rights acquired. BGW then brought an action for annulment of that decision before the Bundespatentgericht.

Unlike time spent asking this sort
of question to the CJEU 

Comparing the marks, the Bundespatentgericht took the view that the overall impression of the earlier mark is dominated exclusively by the sequence of letters ‘BGW’, the figurative component merely emphasising that sequence visually and being irrelevant phonetically. As for the long mark, the word combination ‘Bundesverband der deutschen Gesundheitswirtschaft’ was descriptive and thus devoid of any distinctive character -- it only meant that the goods and services at issue were provided by an association of health sector undertakings operating nationwide, without enabling the commercial origin of those goods and services to be identified precisely. Since the overall impact of each mark was concentrated in the letters 'BGW', a sequence of letters that had at least an independent distinctive role within the later mark under the CJEU jurisprudence in Medion (Case C‑120/04, EU:C:2005:594, noted by the IPKat here). Accordingly, when the relevant public is faced with the long mark, it will recognise the earlier mark, the only difference being that the acronym ‘BGW’ — which was in itself meaningless — would then be clarified by the (descriptive) explanatory indication ‘Bundesverband der deutschen Gesundheitswirtschaft’.

While that court considered that there was therefore a likelihood of confusion, it took the view that it was not possible to state that a component of a composite mark, in this case the sequence of letters ‘BGW’, understood as an acronym in the later mark, had a dominant or at least independent distinctive role if such a component occupied only an ancillary position. Accordingly it decided to stay the proceedings and to refer the question mentioned at the beginning of this blogpost to the CJEU for a preliminary ruling:

In March of this year the Advocate General delivered his Opinion, which wasn't available in English then and which, no doubt for reasons of economy, remains unavailable in English today too [though you can read it in Latvian, Maltese or Croatian if that suits you].  Fortunately, guest Kat Valentina was on hand to explain his advice to the CJEU, which was that it should answer the Bundespatentgericht as follows:

Article 4(1)(b) ... must be interpreted as meaning that, in case of products and the same or similar services, a likelihood of confusion between two signs may exist [and equally therefore may not] in the public mind when the sequence of letters that is the only word element of the earlier sign is reproduced in the later word mark and juxtaposed a descriptive phrase composed of words whose initial letters resume of said sequence, so that it is perceived by the relevant public as being the acronym of the phrase to which it is attached . [So how do you know whether there is a likelihood of confusion? The answer is simple:] The existence of a likelihood of confusion must be assessed globally, taking into account all factors relevant to the case".

The CJEU has now ruled as follows:

Article 4(1)(b) ... must be interpreted as meaning that, in the case of identical or similar goods and services, there may [and equally therefore may not] be a likelihood of confusion on the part of the relevant public between an earlier mark consisting of a letter sequence, which is distinctive and is the dominant element in that mark of average distinctiveness, and a later mark which reproduces that letter sequence and to which is added a descriptive combination of words, the initial letters of which correspond to the letters of that sequence, with the result that that sequence is perceived by that public as the acronym of that combination of words.

In other words, as the CJEU basically said at [41] to [43], the answer is that it's up to the national courts to answer the question themselves on the basis of their assessment of the facts before them -- something which, some Kats might feel tempted to say, they knew already.

Great wastes of time here, here and here