OPPOSITION DIVISION

OPPOSITION No B 2 385 949

S.A. Spa Monopole, Compagnie fermière de Spa, en abrégé S.A. Spa Monopole

N.V., Rue Laporte, 34, 4900 Spa, Belgium (opponent), represented by Gevers,

Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium

(professional representative)

a g a i n s t

Bayrol Deutschland GmbH, Robert-Koch-Str. 4, 82152 Planegg, Germany (holder),

Class 3: Washing and bleaching preparations, cleaning, polishing, grease

removing and abrasive preparations for swimming pools, massage

bath tubes and SPAs; cleaning preparations and degreasing agents

for swimming pools, massage bath tubes and SPAs, pouring

preparations for saunas including essential oils, vapor bath emulsions,

shower gels; filter cleaning preparations as cleaning preparations.

Class 5: Disinfectants for swimming pool water and of feet by vaporizing and

for surface disinfection for swimming pools, massage bath tubes and

SPAs; water disinfectants for turbidity removal, putrefaction

prevention, shock treatment, flocculation.

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

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The opponent filed an opposition against all the goods of international registration

designating the European Union No 1 180 108 for the figurative mark

goods or services in question, under the assumption that they bear the marks in

question, come from the same undertaking or, as the case may be, from

economically linked undertakings. Whether a likelihood of confusion exists depends

on the appreciation in a global assessment of several factors, which are

interdependent. These factors include the similarity of the signs, the similarity of the

goods and services, the distinctiveness of the earlier mark, the distinctive and

dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition

Division finds it appropriate to first examine the opposition in relation to the

opponent’s Benelux trade mark registration No 372 307 for which only Article 8(1)(b)

Class 1: Chemical products not included in other classes, namely for water

treating and water conditioning, especially preparations for the

regulation of PH-value and adjustment of the entire alkalinity and

water hardness, chlorine, bromine and active oxygen for the oxidation

and disinfection, scale removing preparations and antifoam agents,

except for household purposes, chemicals stabilizing hardness for

water analysis, especially for chlorine, bromine, oxygen and PH-value

analysis; all preparations for swimming pools, massage bath tubes

and SPAs.

Class 2: Paints, varnishes, lacquers, anti-corrosive preparations, especially

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Class 3: Washing and bleaching preparations, cleaning, polishing, grease

removing and abrasive preparations for swimming pools, massage

shower gels; filter cleaning preparations as cleaning preparations.

Class 5: Degerminating preparations, disinfectants for swimming pool water

and of feet by vaporizing and for surface disinfection for swimming

pools, massage bath tubes and SPAs; preparations for destroying

vermin; algicides, virucides and bactericides for swimming pools,

massage bath tubes and SPAs; water disinfectants for turbidity

removal, putrefaction prevention, shock treatment, flocculation.

An interpretation of the wording of the list of goods is required to determine the scope

of protection of these goods.

The terms ‘including’ and ‘especially’, used in the holder’s list of goods, indicate that

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,

goods or services are not regarded as being similar to or dissimilar from each other

on the ground that they appear in the same or different classes under the Nice

Classification.

The relevant factors relating to the comparison of the goods or services include, inter

alia, the nature and purpose of the goods or services, the distribution channels, the

sales outlets, the producers, the method of use and whether they are in competition

with each other or complementary to each other.

Contested goods in Classes 1 and 2

When comparing the contested goods in Class 1, which include chemical products

goods have different distribution channels, target a different public and are normally

produced by different kinds of companies.

Contested goods in Class 3

The contested pouring preparations for saunas including essential oils, vapor bath

emulsions are included in the broad category of or overlap with the opponent’s

essential oils in Class 3. These goods are identical.

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The contested pouring preparations for saunas including shower gels are included in

the broad category of or overlap with the opponent’s soaps in Class 3. These goods

are identical.

bath tubes and SPAs; filter cleaning preparations as cleaning preparations are

included in the broad category of or overlap with the opponent’s soaps in Class 3.

The opponent’s soap is a cleaning or emulsifying agent made by reacting animal or

vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain

colouring matter and perfume and act by emulsifying grease and lowering the surface

tension of water, so that it more readily penetrates open materials such as, for

example, also textiles. Since soap is used for cleaning purposes, it is identical to

washing and bleaching preparations, cleaning preparations for swimming pools,

massage bath tubes and SPAs; cleaning preparations for swimming pools, massage

bath tubes and SPAs; filter cleaning preparations as cleaning preparations. Even

though the contested goods partially include that the goods are for swimming pools,

cleaning. They have the same nature and purpose, share the same distribution

channels and target the same public. Even though the contested goods partially

include that the goods are for swimming pools, massage bath tubes and SPAs, this

does not change their similarity.

Contested goods in Class 5

The contested disinfectants for swimming pool water and of feet by vaporizing and

for surface disinfection for swimming pools, massage bath tubes and SPAs; water

flocculation are similar to the opponent’s soaps in Class 3. These goods have the

be manufactured by the same kinds of undertakings. Even though the contested

have the same purpose, they coincide in distribution channels, target the same public

and may be manufactured by the same kinds of undertakings.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be

reasonably well informed and reasonably observant and circumspect. It should also

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be borne in mind that the average consumer’s degree of attention is likely to vary

according to the category of goods or services in question.

directed at business customers with specific professional knowledge or expertise,

such as water disinfectants for turbidity removal, putrefaction prevention, shock

treatment, flocculation in Class 5, as these are mainly used by undertakings in the

swimming pool field.

The public’s degree of attention may vary from average to above average, depending

on the price, specialised nature, or terms and conditions of the purchased goods.

Some of the goods are not very frequent purchases, their price could also be high

and some of the goods also have a very specific purpose and can be hazardous

products to the health of human beings to which the consumer normally pays more

care (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41).

The relevant territories consist of the Benelux countries.

The global appreciation of the visual, aural or conceptual similarity of the marks in

question must be based on the overall impression given by the marks, bearing in

mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,

and ‘T’, as they are the most similar in form to these ones. The contested sign is

written in a slightly fancy typeface.

The earlier mark ‘SPA’ refers to the name of a Belgian town famous for its mineral

and thermal sources, the Belgian racing circuit of Spa-Francorchamps and may also

denote a reference to hydrotherapy such as hammams or saunas and is a generic

term for health and wellness centres providing treatment services for the body based

on hydrotherapy (12/11/2009, T-438/07, SpagO, EU:T:2009:434, § 28; 19/06/2008, T-

93/06, Mineral Spa, EU:T:2008:215, § 31; 25/05/2005, T-67/04, Spa-Finders,

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EU:T:2005:179, § 44; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81;

25/03/2009, T-21/07, Spaline, EU:T:2009:80; 02/03/2009, R 1231/2005-4 and

R 1250/2005-4, WINE SPA, § 36; 03/11/2008, R 219/2005-4, BUBBLE SPA, § 24).

opponent’s argument where it points out that even though the word ‘SPA’ may have a

meaning in the English language, this is not relevant for the Benelux consumers,

since English is not an official language in the Benelux.

Nevertheless, the Opposition Division points out that while it is true that the word

‘SPA’ is generic, it is generic for services in Class 44, as it merely designates the

place where services of treatment of the human body are offered, but usually not for

the goods in Class 3. Therefore, the Opposition Division does not agree with the

holder, in its observations of 21/03/2017, where it mentions that the word ‘SPA’ is

merely descriptive, as the earlier mark ‘SPA’ is perfectly distinctive for the opponent’s

goods in Class 3. In addition, the normal degree of distinctiveness of the earlier mark

Boards of Appeal of the Office (25/03/2009, T-109/07, SPA Therapy, EU:T:2009:81, §

Furthermore, and according to the opponent, the term has also been considered

distinctive according to a decision taken on 03/02/2011 by the Brussels Commercial

Court, confirming the validity of the trade mark ‘SPA’ to designate goods in Class 3 in

the Benelux countries. The word ‘SPA’ is only descriptive and generic of one of the

places in which cosmetic products are used or marketed, places for hydrotherapy

such as hammams and saunas, but this cannot lead to the conclusion that the word

is descriptive or generic for the opponent’s products in Class 3. In sum, the sole

element ‘SPA’ of the earlier mark has a normal degree of distinctiveness in relation to

the goods in Class 3.

However, even though the word ‘spa’ in the contested sign is perceived as having the

the contested goods in Classes 3 and 5, as it will be perceived as referring to the fact

minutes, hours, days and year; time refers to the system of expressing time and

counting hours that is used in a particular part of the world; the period that you spend

Dictionary online), it has, however, no particular meaning in relation to the goods

contested sign.

Visually, the signs coincide in the word ‘SPA’, meaning that the whole earlier mark

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differ in the additional word ‘time’ and in the fancy letters ‘ST’, in the middle, which

are normally distinctive.

confronted with a trade mark. This is justified by the fact that the public reads from

left to right or from top to bottom, which makes the part placed at the left or on top of

the sign (the initial part) the one that first catches the attention of the reader.

Regarding the slightly fancy typeface in which the verbal elements of the contested

sign are written, this stylisation must be considered not that overwhelming and it will

not lead the consumer’s attention away from the words it is supposed to embellish.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the

present identically in the signs under comparison. The pronunciation differs in the

additional concept, which is not shared by the earlier mark. Therefore, the signs are

conceptually similar to a low degree.

As the signs have been found lowly similar in at least one aspect of the comparison,

the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue

normal for the opponent’s goods in Class 3.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk

that the public might believe that the goods or services in question, under the

assumption that they bear the marks in question, come from the same undertaking

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The goods have been found to be partly identical or similar (to various degrees) and

partly dissimilar. The level of attention of the consumer varies from average to above

In combined marks with words and devices, the public would focus more on the word

elements. Furthermore, the term ‘SPA’ in the contested sign is not only the first verbal

element, but it also plays an autonomous role within it, since it is separated from, for

example, the remaining element ‘time’, as the latter is placed in second place.

Despite the reduced distinctiveness of the word ‘SPA’ in the contested sign, it cannot

be denied that a certain, albeit low, similarity exists between the marks at hand,

mostly as they coincide in the whole earlier mark which is the first word, where the

consumers focus normally more, of the contested sign.

Furthermore, account should be taken of the fact that the average consumer only

trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik,

circumstances, the differences between the signs are not sufficient to counteract the

similarities and to safely exclude a likelihood of confusion. It can reasonably be

concluded that consumers will not be able to distinguish the marks in dispute and will

perceive them as having the same origin.

Furthermore, it is very likely that the consumer in the relevant territory will consider

the conflicting marks as having the same commercial origin, for example, that the

contested sign with its additional element ‘time’ represents a new line or a parallel

line of the opponent’s products (05/09/2007, T-220/06, JAKO-O Möbel und

manufacturers frequently put several lines of products on the market under different

mark.

interdependence between them, i.e. the principle that a lesser degree of similarity

the marks, here the moderate similarity of the signs does not outweigh the low

degree of similarity of part of the goods in Class 5, namely degerminating

preparations, preparations for destroying vermin; algicides, virucides and

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goods it is important to mention that they are hazardous preparations, usually toxic,

that can be dangerous for human’s health and the consumer would pay more

attention to these and is even more capable of distinguishing between them.

EUTMR, the opposition based on this Article and directed at these goods cannot be

successful.

Since the opposition is not fully successful on the basis of the ground of Article 8(1)

(b) EUTMR, the Opposition Division will further examine the other ground of the

opposition, namely Article 8(5) EUTMR regarding Benelux trade mark registration

No 389 230 for the word mark ‘SPA’ for some of the remaining contested goods,

namely chemical products not included in other classes, namely for water treating

and water conditioning, especially preparations for the regulation of PH-value and

adjustment of the entire alkalinity and water hardness, chlorine, bromine and active

oxygen for the oxidation and disinfection, scale removing preparations and antifoam

analysis, especially for chlorine, bromine, oxygen and PH-value analysis; all

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‘SPA’ for mineral waters (see judgment of 25/05/2005, T-67/04, Spa-Finders,

more recently been confirmed by the General Court in judgment of 05/05/2015,

T-131/12, SPARITUAL, EU:T:2015:257, § 44 and by the Boards of Appeal in the

decisions of 29/04/2013, R 1594/2012-4, ‘ARETE SPA’, § 36; 14/02/2013,

R 2186/2010-2, ‘SENSORI SPA’, § 38; 06/07/2015, R 2334/2013-4, ‘OLIOSPA’, §

37). In the ‘OLIOSPA’ case the Board of Appeal stated: ‘In the light of the documents

submitted by the opponent, the earlier trade mark has a reputation in the Benelux

countries in respect of ‘mineral and aerated waters’. …The sales figures, marketing

expenditure and market share as well as the various references in the press to the

success of the trade mark, are all circumstances that establish unequivocally that the

trade mark enjoys a high degree of recognition among the general public in the

mark regarding the following goods: mineral water and aerated waters in Class 32,

mark ‘SPA’ enjoys a reputation in the Benelux for mineral water and aerated waters

b) The signs

The signs have already been compared above under the ground of Article 8(1)(b)

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In order to establish the existence of a risk of injury, it is necessary to demonstrate

that, given all the relevant factors, the relevant public will establish a link (or

association) between the signs. The necessity of such a ‘link’ between the conflicting

additional requirement but merely reflects the need to determine whether the

association that the public might establish between the signs is such that either

detriment or unfair advantage is likely to occur after all of the factors that are relevant

to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (Intel, § 42):

 the nature of the goods and services, including the degree of similarity or

dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or

acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the

particular circumstances. Moreover, the existence of a ‘link’ may be established on

the basis of only some of these criteria.

In the present case, the examination of the opposition under Article 8(5) EUTMR

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As seen above, the signs were found to be similar to a low degree. However, the

goods for which the opponent claims reputation are completely different from the

goods of the contested sign, for which this sign has not been rejected under Article

drinking water for human consumption.

On the other hand, the goods applied for and subject to assessment under Article

8(5) EUTMR are chemical products for water treating and water conditioning; all

preparations for swimming pools, massage bath tubes and SPAs (Class 1); all kinds

of pains and anti-corrosive preparations; all preparations for swimming pools,

massage bath tubes and SPAs (Class 2) and degerminating preparations,

preparations for destroying vermin; algicides, virucides and bactericides for

swimming pools, massage bath tubes and SPAs (Class 5), which are, as already

pointed out before, all used for swimming pools, massage bath tubes and SPAs,

installations usually present in hydrotherapy and wellness centres. The contested

professionals or private owners of swimming pools, tubes and SPAs, etc. with the

remaining contested goods. Even if the relevant section of the public for the goods

covered by the conflicting marks might be the same or may overlap to some extent

as this can also be the public at large, such as private owners of swimming pools,

tubes and SPAs, those goods are so different that the later mark is unlikely to bring

the earlier mark to the mind of the relevant public. This is even more the case, since,

as pointed out already above, the element ‘SPA’ has a very limited impact due to its

reduced distinctiveness in the contested sign. When perceiving the contested sign,

and the word ‘SPA’ in it, the consumer is much more likely to see this word as a

descriptive element indicating the purpose of the goods to be used in relation to

Class 32.

The nature, function and purpose of the confronted trade marks’ goods are,

business sectors, as it is unlikely that a company producing chemicals, including for

destroying vermin, and paints for swimming pools and the like, also produces

will make a link between the signs in dispute, which is essential for the application of

contested sign, it would remind the consumer of the earlier mark, reputed for the

goods mentioned in more detail before.

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At the same time it must be stressed that the issue here cannot be merely that the

goods are dissimilar, because Article 8(5) EUTMR specifically covers dissimilar

goods/services. The Opposition Division highlights not only the divergent nature of

degree of distinctiveness in the contested sign. Since there is no proximity in the

economic sectors of the opponent’s goods and the contested goods, but rather a

large gap, it is too far-fetched to conclude that the consumer when seeing the

contested sign will be reminded of the earlier mark, even more because of the

reduced impact of the weak element ‘SPA’ in the contested sign (see, by analogy,

decision of the Board of Appeal, 19/02/2016, R 226/2015-1, ‘SPA’/’PLANET SPA’

(FIGURATIVE), § 23-24, 28).

According to the holder, in its observations of 21/03/2017, the goods are obviously

not similar to ‘mineral water’. Furthermore, the word element ‘SPA’ in the contested

mark is merely descriptive for the contested goods, which, without any exception,

common, generic word element ‘SPA’ will, in regard to the contested application, be

racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as

hammams or saunas. It is, therefore, undisputed that consumers in the Benelux,

know what a spa is. When the public sees this term in relation to goods or services

that, as are these contested goods, connected with hydrotherapy or wellness

centres, it will regard it as having a merely reduced distinctiveness for those goods or

services (01/12/2011, R 2504/2010-1, EcoSpa (figurative), § 26; 29/09/2011,

R 2070/2010-1, BEYOND SPA, § 61-62). Moreover, in the contested sign, the term

‘spa’ is followed by the word ‘time’ and the relevant consumers will, therefore, regard

this combination of words in connection with the contested goods as a reference to

‘spa’ a term which has a reduced distinctiveness in relation to the goods at stake in

and paints, namely that they are for swimming pools, baths, saunas, SPAs, etc.

and the like, that link will not be made by reasonably attentive consumers, even if

they are aware that ‘SPA’ is (also) a famous brand of mineral water in Belgium.

Since the ‘link’ required by relevant case-law for the application of Article 8(5)

the image conveyed by the earlier mark or be detrimental to its reputation. The two

marks will convey to consumers different concepts: that of purity, as regards the

earlier mark, that of hydrotherapy in the sense of a SPA, as regards the contested

Decision on Opposition No B 2 385 949 page: 20 of 21

Therefore, taking into account and weighing up all the relevant factors of the present

case, the Opposition Division concludes that it is unlikely that the relevant public will

The opponent refers to many previous decisions of the Office and also to decisions

taken by the Courts to support its arguments. First of all, it must be noted that the

Office is not bound by its previous decisions, nor by decisions by any other

institutions, as each case has to be dealt with separately and with regard to its

particularities, however many decisions that were mentioned were applicable also for

the present case because of the similarities with the case at hand. The Opposition

Division has explained in some of the above sections, by mentioning the majority of

the cases, the reason why the opponent has referred to them in the present decision.

It is, however, impossible for the Opposition Division to enter into each of them

individually and has explained, therefore, in more general terms the content of these

have been taken into consideration for the case at hand.

be examined on its own individual merits. The outcome of any particular case will

depend on specific criteria applicable to the facts of that particular case, including, for

example, the parties’ assertions, arguments and submissions. Finally, a party in

proceedings before the Office may not rely on, or use to its own advantage, a

possible unlawful act committed for the benefit of some third party in order to secure

an identical decision.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

EUTMR, where each party succeeds on some heads and fails on others, or if

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