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Tuesday, 25 November 2014

ECR-Award - BGH on the registrability of acronyms

A recently published decision by the German Federal Supreme Court (BGH) concerning the registrability of acronyms as trade marks (case reference I ZB 64/13, "ECR-Award", of 22 May 2014, see here in PDF) was quite widely reported (here, here, here) by German legal commentators since it indicates that the highest German court in civil matters is more generous than both the DPMA and the German Federal Patent Court when it comes to deciding on the registrability of a trade mark.
In its decision, the BGH held that, when deciding whether a trade mark consisting of an acronym lacks distinctiveness and is therefore not registrable as a trade mark, it was crucial to establish whether the relevant consumers regarded the sign itself as a descriptive term or as an acronym.  So far so good. However, now for the more 'contentious' part: when determining the view of the average consumer or the "understanding of the relevant circle" (Verkehrsverständnis), the judges took the view that this could not be determined by reference to the specification covered by the mark, but solely by reference to the sign itself.
Efficient consumer response?!
Applying this to the case and trade mark in question: "ECR-Award" covering services in class 41 (in the German original: "Organisation und Durchführung von Preisverleihungen für Manage-mentleistungen, insbesondere im Bereich Efficient Consumer Response, die intelligente Kooperation zum Nutzen der Konsumenten"), the BGH took the view that (German) consumers would not be in a position to understand the acronym "ECR" as a acronym of the English language term "Efficient Consumer Response" without reference to the class 41 specification covered. The judges explained that the average consumer was usually not aware of scope of a trade mark specification and could therefore not conduct an analysis of the goods and/or services covered. Consequently, the trade mark "ECR-Award" disagreed with the DPMA and T was not lacking distinctiveness for the services covered in class 41 and disagreed with the differing assessment by the DPMA and the German Federal Patent Court, which had both had done exactly that - found that the mark ECR-Award was lacking distinctiveness for the services covered in class 41.
Merpel cannot help but feel for the Examiners. How are they meant to assess distinctiveness if they cannot refer to the specification.  Consumers may not be aware of the exact specification as filed but they are faced with the services in question as offered under the trade mark, which should in an ideal world reflect what is covered by the specification, nein?  Is Merpel overcomplicating things and/or missing the point?


Anonymous said...

I was under the impression that an acronym had to be pronouncable as a word - for instance, LASER is an acronym while IBM isn't. So I'm far from convinced that ECR (or ECR-Award) is an acronym at all.

On the wider point - I'm not an expert on trade marks, but the decision does seem wrong. It seems equivalent to saying that, if someone applies for the word "Orange" as a trade mark for "mobile phone services", it should be refused on the grounds that customers in a fruit shop, or in a paint shop, would not recognise the word as a trade mark and would think it descriptive.

Jeremy Nicholls said...

This seems to be a situation peculiar to acronyms. The BGH seems to identify two steps: firstly, assessing whether/how the acronym will be understood, and secondly, assessing the distinctiveness of the acronym as understood in the first step. The first step is carried out without reference to the specification, but the second step is carried out, as usual, with reference to the specification. IMHO.

Michael Thesen said...

In my view, this requires even three steps. The examiner has to peek into the specification to determine what the "relevant circle" may be. Then forget about the specification to determine how the members of the relevant circle will presumably understand the acronym, then remember the specification again to assess whether the understanding of the relevant circles us such that the trademark is descriptive for any of the goods or services mentioned therein. Really a brain-twister kind of exercise...

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