BGW Beratungs-Gesellschaft Wirtschaft mbH v Bodo Scholz.
Date: 2015-10-22
13. The national court is inclined to take the view that the overall impression of the later mark is also dominated by the sequence of letters ‘BGW’. In any event, the Bundespatentgericht (Federal Patents Court) adds that, irrespective of how the word combination is to be assessed, that sequence of letters has to be acknowledged as having at least an independent distinctive role within the later mark, in accordance with the judgment in Medion  (C‑120/04, EU:C:2005:594). Therefore, according to that court, when the relevant public is faced with the later mark, it will recognise the earlier mark, the only difference being that the acronym ‘BGW’ — which is in itself meaningless — will now be clarified by the (descriptive) explanatory indication ‘Bundesverband der deutschen Gesundheitswirtschaft’.
15. That court, however, considers that it is not able to give a ruling to that effect on account of the Court’s position in the judgment in Strigl and Securvita (C‑90/11 and C‑91/11, EU:C:2012:147), in which the Court held that Article 3(1)(b) and (c) of Directive 2008/95 is applicable to a word mark which consists of the juxtaposition of a descriptive word combination and a letter sequence which is non-descriptive in itself, if 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 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. Furthermore, the national court states that, in paragraph 38 of that judgment, the Court held that the letter sequence which reproduces the initial letters of the words comprising the word combination occupies only an ancillary position in relation to the word combination.
17. The fact that the judgment in Strigl and Securvita  (C‑90/11 and C‑91/11, EU:C:2012:147) concerned the absolute grounds for refusal of registration under Article 3 of Directive 2008/95 does not, according to the Bundespatentgericht (Federal Patents Court), justify a different assessment being made in the main proceedings, which involve the further ground for refusal set out in Article 4(1)(b) of that directive, since the public’s perception of a mark cannot, in principle, depend on whether it is a ground for refusal under Article 3 or Article 4 of Directive 2008/95 that is concerned.
20. Since the national court has asked that question in the light of the doubts which it has as regards the application of the judgment in Strigl and Securvita  (C‑90/11 and C‑91/11, EU:C:2012:147) in assessing the similarity between the marks at issue in the main proceedings, it is therefore appropriate, in the first place, to assess the scope and the relevance of that judgment.
21. In the cases in the main proceedings which gave rise to the judgment in Strigl and Securvita  (C‑90/11 and C‑91/11, EU:C:2012:147), what was at issue were two word marks, one consisting of the sign ‘Multi Markets Fund MMF’ to designate an investment fund which invests in many financial markets and the other of the sign ‘NAI - Der Natur-Aktien-Index’ to designate a share index showing the shares of ecologically-oriented undertakings. Inasmuch as, in those cases, the national court took the view that the signs ‘MMF’ and ‘NAI’, taken in isolation, were not descriptive for the purposes of Article 3(1)(c) of Directive 2008/95, it asked the Court whether the grounds for refusal under Article 3(1)(b) and/or (c) of that directive were applicable to a word mark which consists of the juxtaposition of a descriptive word combination and a letter sequence which is not descriptive in itself but which reproduces the initial letters of each of the words making up that word combination.
24. The general interest underlying Article 3(1)(c) of Directive 2008/95 is that of ensuring that signs which describe one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services (judgment in Strigl and Securvita , C‑90/11 and C‑91/11, EU:C:2012:147, paragraph 31 and the case-law cited).
25. The notion of general interest underlying Article 3(1)(b) of that directive is indissociable from the essential function of a trade mark, which is to guarantee the identity of the origin of the product or service covered by the mark to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin (see judgment in Eurohypo  v OHIM , C‑304/06 P, EU:C:2008:261, paragraph 56 and the case-law cited).
26. By contrast, Article 4(1)(b) of Directive 2008/95 is intended to protect the individual interests of proprietors of earlier marks that come into conflict with the sign applied for and thus guarantees the trade mark as an indication of origin if there is a likelihood of confusion (see, to that effect, judgment in Medion , C‑120/04, EU:C:2005:594, paragraphs 24 and 26 and the case-law cited).
29. Secondly, in paragraph 32 of the judgment in Strigl and Securvita (C‑90/11 and C‑91/11, EU:C:2012:147), the Court pointed out that the three capital letters in each of the signs, namely, ‘MMF’ and ‘NAI’, represented the initial letters of the word combinations to which they were attached and that the word combination and the letter sequence, in each case, were intended to clarify each other and to draw attention to the fact that they were linked, each letter sequence being designed to support the public’s perception of the word combination, by simplifying its use and by making it easier to remember.
31. It is apparent from the grounds of the judgment in Strigl and Securvita , (C‑90/11 and C‑91/11, EU:C:2012:147) that whether a sign consisting of a letter sequence juxtaposed with a word combination is to be refused registration under Article 3(1)(b) and (c) of Directive 2008/95 must be assessed on a case-by-case basis, according to the perception which the relevant public has of the interdependence between the various elements of the sign and of the sign as a whole.
34. It follows from the foregoing that, in the light of the different legal context of the cases which gave rise to the judgment in Strigl and Securvita (C‑90/11 and C‑91/11, EU:C:2012:147) and the scope which must be attributed to that judgment, 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.
35. In the second place, it is necessary to bear in mind the case-law according to which the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (judgment in Bimbo  v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 21 and the case-law cited).
36. 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 (judgment in OHIM  v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 41, and judgment in Aceites del Sur-Coosur  v Koipe and OHIM , C‑498/07 P, EU:C:2009:503, paragraph 61).
37. Although the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components, 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 (judgment in OHIM  v Shaker , C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42, and judgment in Nestlé  v OHIM , C‑193/06 P, EU:C:2007:539, paragraphs 42 and 43 and the case-law cited).
38. In that regard, the Court has stated that, even if the element common to the marks at issue cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those marks, to the extent that it constitutes in itself the earlier mark and retains an independent distinctive role in the trade mark consisting, inter alia, of that element, for which registration is sought. Where a common element retains an independent distinctive role in the composite sign, the overall impression produced by that sign may lead the public to believe that the goods or services at issue come, at the very least, from companies which are linked economically, in which case a likelihood of confusion must be held to be established (judgment in Medion , C‑120/04, EU:C:2005:594, paragraphs 30 and 36, and order in ecoblue v OHIM and Banco Bilbao Vizcaya Argentaria , C‑23/09 P, EU:C:2010:35, paragraph 45).
39. However, the Court has also stated that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (judgment in Bimbo  v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 25).
40. It must also be pointed out, as the Advocate General stated at point 40 of his Opinion, that, in principle, even an element which has only a weak distinctive character may dominate the overall impression of a composite mark or have an independent distinctive role in that mark within the meaning of the case-law resulting from the judgment in Medion  (C‑120/04, EU:C:2005:594), since, it may, because of, inter alia, its position in the sign or its size, make an impression on consumers and be remembered by them.
41. In the present case, it will be for the national court to ascertain the overall impression made on the relevant public by the later mark, by means of, inter alia, an analysis of the components of that mark and of their relative weight in the perception of that public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion (judgment in Bimbo  v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 34).