Europe: Confusion notwithstanding descriptive phrase
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Europe: Confusion notwithstanding descriptive phrase

In BGW v Bodo Scholz (Case C-20/14), BGW Beratungs-Gesellschaft Wirtschaft opposed the younger mark BGW Bundesverband der Deutschen Gesundheidswirtschaft at the German Patent Office. The Office upheld the opposition brought by BGW in part and partially cancelled the registration of the later mark on account of likelihood of confusion between the two marks at issue. BGW's senior mark is pictured.

Following an appeal by the owner of the later mark, that decision was set aside on the ground that BGW had not demonstrated use of its mark in such a way as to preserve the rights acquired. BGW brought an action for annulment of that decision before the Bundespatentgericht (Federal Patents Court).That Court concluded that the marks at issue cover goods which are identical and services which are in part identical and in part similar. As to the similarity of the marks at issue, the national court decided to refer the following question to the CJEU for a preliminary ruling:

Must Article 4(1)(b) of Directive 2008/95 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?

The CJEU ruled that Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of October 22 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as follows: In the case of identical or similar goods and services, there may 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 that combination 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.

Accordingly, it appears that this ruling provides marks consisting of a letter sequence with more room for manoeuvre.


Noëlle Wolfs

V.O.Johan de Wittlaan 72517 JR The HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67

more from across site and ros bottom lb

More from across our site

Sources debate the implications of an opinion by Delaware’s chief judge Colm Connolly that lambasted the NPE IP Edge
Five partners reveal how delays in examining trademark applications are affecting their advice to clients and how they pitch new work
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Partners at Quinn Emanuel explain how walkie-talkie and real-estate analogies helped them win over a jury at the Eastern District of Texas
The heads of Malaysian firm HHQ’s new technology practice group say they can be frontline advisers on the intersection between AI, blockchain, and IP
Darren Jiron, Finnegan’s managing partner in London, discusses the firm’s growth plans and misconceptions about US firm culture
The EMEA region research cycle has commenced - do not miss this opportunity to nominate your work from 2023!
A former partner at Stroock & Stroock & Lavan, which voted to dissolve in October, has joined McCarter & English
As ChatGPT celebrates its first birthday, we are still grappling with a multitude of IP concerns
Sources say an official role at an IP industry body is great for generating business leads, but that shouldn’t be the only motivation behind taking on the responsibility