DOT SPA | Decision 2577875 – S.A. Spa Monopole, Compagnie fermière de Spa, en abrégé S.A. Spa Monopole N.V. v. Dot Cosmetica SA

OPPOSITION No B 2 577 875

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

Dot Lifestyle SA, Via alla Campagna 2ª, 6900 Lugano, Switzerland (applicant), represented by ADV IP S.R.L., Via Monte Generoso 6/A, 20155 Milano (MI), Italy (professional representative).

On 20/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 577 875 is partially upheld, namely for the following contested goods:

Class 3: Soaps; cosmetics, namely essential oils, cosmetics, hair lotions; nail art stickers; adhesives for cosmetic purposes; adhesives for affixing false hair; adhesives for affixing false eyelashes; aloe vera preparations for cosmetic purposes; aromatics [essential oils]; astringents for cosmetic purposes; balms other than for medical purposes; joss sticks; cotton sticks for cosmetic purposes; make-up; false eyelashes; make-up powder; hair dyes; cosmetics; cosmetics preparations for eyelashes; eyebrow cosmetics; cosmetic creams; skin whitening creams; bleaching preparations [decolorants] for cosmetic purposes; massage gels other than for medical purposes; dental bleaching gels; petroleum jelly for cosmetic purposes; greases for cosmetic purposes; hair spray; nail polish; almond milk for cosmetic purposes; lotions for cosmetic purposes; lip glosses; polish; mascara; beauty masks; eyebrow pencils; cosmetic pencils; decorative transfers for cosmetic purposes; cosmetic kits; oils for toilet purposes; ethereal oils; essential oils of cedarwood; essential oils of lemon; oils for cleaning purposes; oils for cosmetic purposes; gaultheria oil; jasmine oil; lavender oil; almond oil; rose oil; cotton wool for cosmetic purposes; pumice stone; pomades for cosmetic purposes; sun-tanning preparations [cosmetics]; cosmetic preparations for baths; hair waving preparations; cosmetic preparations for slimming purposes; cosmetic preparations for skin care; depilatories; make-up preparations; mouth washes, not for medical purposes; nail care preparations; smoothing preparations [starching]; make-up removing preparations; lacquer-removing preparations; color-removing preparations; lipsticks; bath salts, not for medical purposes; almond soap; shaving soap; cakes of soap; soaps; soap for foot perspiration; antiperspirant soap; deodorant soap; shampoos; dry shampoos; breath freshening sprays; breath freshening strips; talcum powder, for toilet use; cosmetic dyes; tissues impregnated with cosmetic lotions; false nails; all the aforesaid goods for use in wellness industry (including spas, health resorts, saunas and thermal baths).

Class 5: Pharmaceutical preparations; sanitary preparations for medical purposes; foodstuffs and dietetic substances for medical or veterinary purposes; tanning pills; sea water for medicinal bathing; goulard water; mineral waters for medical purposes; thermal water; nutritional supplements; dietetic foods adapted for medical use; antioxidant pills; sanitary towels; styptic preparations; oxygen baths; bath preparations for medical purposes; balms for medical purposes; frostbite salve for pharmaceutical purposes; sanitary wear; dietetic beverages adapted for medical purposes; compresses; mud for baths; medicinal oils; slimming pills; aloe vera preparations for pharmaceutical purposes; medicinal hair growth preparations; eye-washes; vitamin preparations; medical preparation for slimming purposes; bath (therapeutic preparations for the -); sunburn ointments; callouses (preparations for -); burns (preparations for the treatment of -); pharmaceutical preparations; pharmaceutical preparations for treating dandruff; pharmaceutical preparations for skin care; remedies for perspiration; remedies for foot perspiration; mineral water salts; smelling salts; salts for mineral water baths; food nutritional supplements containing vitamins; herbal preparations for medical purposes; herbal supplements; extracts of medicinal herbs; herbal beverages for medicinal use; vitamins; vitamin preparations; vitamin food supplements; mineral preparations for medical purposes; mineral food supplements; protein preparations and supplements; creatine preparations and supplements; vitamin food supplements; vitamin and mineral supplements; diet supplements; food supplements in powdered drink mix and beverage forms; nutritional additives and supplements; nutritional preparations; food supplements; dietary and nutritional supplements; tonics for medical purposes; preparations and substances for use in the treatment of obesity; slimming aids; preparations for promoting weight loss; preparations for promoting weight gain; preparations for promoting muscle gain; protein based drinks, compositions for the preparation thereof; creatine-based drinks, compositions for the preparation thereof; dietary beverages, compositions for the preparation thereof; dietetic and energy-giving foodstuffs for medical purposes; dietetic food supplements for medical purposes.

2. European Union trade mark application No 13 849 765 is rejected for all the above goods. It may proceed for the remaining contested goods in Class 5 and non-contested goods in Class 25.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 849 765 for the figurative mark , namely against all the goods in Classes 3 and 5. The opposition is based, after a limitation on 12/10/2016, on the following earlier marks: Benelux trade mark registration No 372 307 for the word mark ‘SPA’, in relation to which the opponent invoked Article 8(1)(b) EUTMR, and Benelux trade mark registration No 389 230 for the word mark ‘SPA’, in relation to which the opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 16/06/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based, were put to genuine use in the Benelux countries from 16/06/2010 to 15/06/2015 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opponent bases its opposition, which was limited by the opponent on 12/10/2016, to the following:

Benelux trade mark registration No 372 307

Class 3: Cosmetics.

Benelux trade mark registration No 389 230

Class 32: Mineral water and aerated water.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 08/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/08/2016 to submit evidence of use of the earlier trade marks. This deadline was extended until 13/10/2016. On 26/01/2016, together with the documents for filing further facts, evidence and arguments, the opponent submitted, in particular the evidence below mentioned, which will also be taken into account for proving the use. Furthermore, as will be seen further below, on 12/10/2016 and 13/10/2016, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The opponent submitted, in particular, the following evidence:

Extracts of the publication ‘LE GUIDE DU BUVEUR D’EAU’ by Emmanuelle Evina, Reviewed Edition 1997, referring to more than 90 mineral and spring waters and citing on page 241 till 245 the trade mark SPA, mentioning the international reputation of the trade mark on page 241 as well as the high purity of the mineral water SPA REINE.

Extracts from the Belgian weekly magazine ‘Echos de SPA THEUX’ – edition 26 August 1998 entitled: ‘Bons Baisers de Spa: Spa Monopole en cartes postales’ and referring to the fact that the company Spa Monopole is not only a company known all over the world but has also become an inevitable magnet for tourists in the region with approximately 40.000 visitors on an annual basis, citing the word mark ‘SPA’ in the last paragraph.

Copy of an extract from the Belgian daily magazine ‘La Meuse Verviers’ – edition 7 December 1999 entitled: ‘LES ARTISTES en bouteille’ relating to the opening of the 35th harnessing for Spa Monopole, mentioning that the company produces 500.000.000 litres per year.

Copies of an extract of the book entitled: ‘THE ORIGINAL SPA WATERS OF BELGIUM’ by L.M. Crismer, 1989, pages 9, 10, 11, 65, 66, 67, 72, 75, 88, 96, 99, 103. On pages 66 and 67, the extract shows a range of labels of the word mark ‘SPA’ since 1921.

An extract of a publication entitled: ‘THE GOOD WATER GUIDE’ by Maureen & Timothy Green – THE WORLD’S BEST BOTTLED WATERS Revised edition 1994, page 88, showing a label bearing the word mark ‘SPA’.

Copy of an extract from the publication ‘THE FAMOUS BRANDS’ by Theo Visser & Robert-Jan Heijning, Editions Markgraaf 1985, page 122 which refers to mineral water ‘SPA’.

Copy of an extract from a supplement to the newspaper ‘La Derniere Heure’ dated 10 June 1994, ‘SPECIAL NATURE L’EAU’, pages 4 and 8.

Copy of an extract from the ‘Eco Soir’ – ‘Le Soir’ September 1, 2000’.

Information regarding the events sponsored by the opponent, extract of the Internet sites including a leaflet regarding the sponsoring of ’20 KM de Bruxelles – Edition 2000’, where the participants wear a number showing the word mark ‘SPA’.

Copy of a Declaration from Mr. Marc du Bois, Managing Director of S.A. Spa Monopole N.V., regarding the sales figures and the global advertising budget in respect of products sold by S.A. Spa Monopole N.V. under the trade mark ‘SPA’ in the Benelux countries (natural mineral waters, carbonated mineral waters, soft drinks and other non-alcoholic drinks) for the period 1990 to 2014.

1 CD relating to Annual Reports for the period 1989 to 1999 with an English summary and showing the structure of the group SPADEL and the relationship between SPADEL S.A. and the opponent. The reports also show various advertisements of the trade mark ‘SPA’ and the extent of use.

1 CD concerning the opponent which contains an old short film entitled: ‘SPA RICHESSE NATIONALE’ (Spa national resource) which shows the extent of the activity of the company Spa Monopole in the early years and which also includes a compilation of advertisements and commercials of the trade mark ‘SPA’ in the years 1923, 1960, 1975, 1987, 1989, 1990, 1992, 1993, 1994, 1996, 1998 and 2000.

1 CD relating to various advertisements of the trade mark ‘SPA’.

Copies of extracts of ‘Trends Magazine Top 5000’ No 51-52 of 23 December 1999, No 51 of 21 December 2000, No 50 of 11 December 2003 citing the ‘TOP 5000 biggest enterprises in Belgium’ showing the turnover of Spa Monopole for the years 1997-1998, 1998-1999, 2001 and 2002. The extracts show that the opponent ranks third in the first two lists and the third as regards the breweries and soft drinks sector.

Extracts from the magazine entitled: ‘bottledwaterworld’ May-June 2001.

Extracts from the publication entitled: ‘Le grand livre de l’eau, Histoire, Traditions, Environment, Art de Vivre’ de Jacques Mercier, La Renaissance du Livre, 2000, citing the opponent on page 112 and listing various trade marks of the Belgian market regarding mineral waters in Belgium, mentioning that ‘SPA is the leader with 23,6% of the market’ on page 117.

Extract of ‘La libre Entreprise’ of 22 July 2000, entitled: ‘Que d’eaux, que d’eaux’.

Copy of 3 labels affixed to the goods of the opponent showing that the mineral water ‘SPA’ is recognised by the Royal Academy of Medicine in Belgium as being highly beneficial for the health and showing also the use on the labels of the word mark ‘SPA’.

Extracts of the Decision Estee Lauder Cosmetics (Appeal Court Brussels 31/03/1983).

Copy of extracts from the publication ‘Trends Tendances’ No 30-31 of 25 July 2002 entitled: ‘Nestle Waters/Spadel – Des Eaux fortes’.

Extract of ‘London Baby Book 2002/03’ by Kate Calvert.

Extracts of annual reports relating to advertisements made by the opponent showing the image of purity of the mineral water ‘SPA’ during the years 1991, 1993-1997.

Copy of a leaflet regarding the Biennial Spa Foundation Prize ‘The Original Spa Water’ created in 2003.

Copy of a press article from ‘La Libre Belgique’ dated 20 December 2005, citing the trade mark ‘SPA’ as the 7th most valuable Belgian trade mark.

Copy of an independent survey, namely the ‘Reader’s Digest survey European most trusted brands’ citing ‘SPA’ as the 7th most trusted brand for soft drinks in Belgium and the Netherlands for the years 2003, 2004 and 2005.

Copy of a press article from ‘L’Echo’, dated 17 January 2003 citing Spadel as the leader on the market of waters.

Copy of extracts from press articles regarding the reputation of the trade mark ‘SPA’ for mineral waters: articles from ‘Het laatste Nieuws’ (13/03/2003), ‘La Dernière Heure’ (13/03/2003), ‘De Financieel-Economische Tijd’ (17/03/2003).

Copy of a press article ‘SPA couronnee meilleure eau d’Europe’ (Belgian newspaper ‘La Dernière Heure – Les Sports’ – 30 January 2009) and English translation. This prize is awarded by CERAM (Centre Européen de Recherche en Eaux Minérales), ‘the European Center for research in mineral waters’. This prize is based on a scientific study based on four criteria: the intrinsic characteristics of the goods, the company’s policy in the field of protection of natural resources, the research and development and the marketing of the goods. This prize was awarded for the first time to ‘SPA’, ‘a Belgian water that has reached a milestone in the history of natural mineral waters and that is today still recognised for its original purity and its constant quality’. A copy is enclosed of the press report from CERAM (Centre Européen de Recherche en Eaux Minérales), dated 29 January 2009 and an extract from the Belgian press article ‘Le Soir’, dated 30 January 2009.

Extracts from the website www.wherebrandsbecomestars.com/The-Brand-Rankings.aspx, printed on 29 April 2010, showing the trade mark ‘SPA’ in 22nd position amongst the 100 most performing brands in the Dutch supermarkets for the years 2008 and 2009, in the industry of ‘food and beverage’.

Extract from a catalogue from the supermarket ‘Colruyt’, dated 19 May 2010 till 1 June 2010 showing a campaign for 30 years of red prices and in particular the mineral water ‘SPA’ which was already commercialised in 1980 and the label used in 1980 compared to the label used in 2010.

Copy of extracts from Belgian publication ‘Bizz’ – June 2010 ‘La cure de jouvence d’une eau multicentenaire’.

Extracts of Annual Reports for the years 2005, 2006, 2007, 2009, 2010, 2011, 2012 and 2013 and an English translation showing the activity of the opponent relating to the mineral waters and soft drinks commercialised under the trade mark ‘SPA’ and some sales figures relating to the trade mark ‘SPA’.

Copy of an article from ‘Entreprendre Today’ concerning an opinion poll conducted by the independent company ‘akkanto’ which shows that SPADEL (trade marks ‘SPA’ and ‘BRU’) is the Belgian company which has the second best reputation among the top ten Belgian enterprises. The poll was conducted among 14.000 Belgian persons during January-February 2012 (copy of press article dated 25 April 2012).

Copies of extracts of the magazine ‘Trendstop’ 2012 (supplement to ‘Trends Tendances’ No 49 of 8 December 2011) and ‘Trendstop’ 2013 (supplement to ‘Trends Tendances’ No 49 of 6 December 2012). These extracts relate to the ranking of the TOP 5000 biggest enterprises in Belgium according to financial results in 2009, 2010 and 2011 and show Spa Monopole at the 3rd position in its sector (drinks, with or without alcohol).

Copies of press release extracts for 2008, 2009, 2010 and 2011.

Copies of extracts of the magazine ‘Trendstop’ 2014 (supplement to ‘Trends-Tendances’ No 49 of 5 December 2013). These extracts relate to the ranking of the TOP 5000 biggest enterprises in Belgium according to financial results in 2011 and 2012 and show Spa Monopole in 3rd position in its sector (drinks, with or without alcohol).

Copies of extracts of the magazine ‘Trendstop’ 2015 (supplement to ‘Trends-Tendances’ No 50 of 11 December 2014). These extracts relate to the ranking of the TOP 5000 biggest enterprises in Belgium according to financial results in 2012 and 2013 and show Spa Monopole in 3rd position in its sector (drinks, with or without alcohol).

Copies of extracts of the magazine ‘Trendstop’ 2016 (supplement to ‘Trends-Tendances’ No 50 of 10 December 2015). These extracts relate to the ranking of the TOP 5000 biggest enterprises in Belgium according to financial results in 2013 and 2014 and show Spa Monopole in 3rd position in its sector (drinks, with or without alcohol).

A copy of the decision rendered by the Court of Commerce of Brussels on 19 December 2003, in case ‘SPA’ versus ‘ART OF SPA’ with an English summary (Ingénieur Conseil No 4, 2003, pg 359 till 378), ordering the nullity of the Benelux trade mark ‘ART OF SPA’ in Class 3.

Judgment of the Court of Appeal of Brussels of 4 September 2007 ruling on Cases R.G.: 2004/AR/1447 and 2007/AR/105 and a translation thereof, confirming the judgment of the Court of Commerce of Brussels of 19 December 2003 in the case of ‘ART OF SPA’.

Copy of the decision rendered by the Court of Appeal of Liege (Belgium) on 8 March 2010 confirming the reputation of, inter alia, trade mark ‘SPA’ in Class 32 in the Benelux and an English translation of some extracts (21 pages). A copy of the publication of this decision, together with a summary in English (ICIP – Ingénieur Conseil No 1/2010, pages 59, 60, 61 and 62) (3 pages). Therefore, a full translation into English of the decision rendered in French by the Court of Appeal of Liege.

Copy of the decision rendered by the Court of Commerce of Brussels on 3 February 2011 and an English translation of some extracts, of ‘SPA MONOPOLE’ versus ‘The Body Shop International’ (‘SPA WISDOM’).

On 12/10/2016 and 13/10/2016, within the time limit for filing proof of use, the opponent submitted, in particular, the following evidence of use:

Copy of the database of the Benelux trade marks Register which reflects the recordal of the licences to ‘Laboratoires de Biologie Vegetale Yves Rocher’ on 19/04/2004 and to ‘Sothys’ on 08/05/2001 concerning Benelux trade mark registration No 372 307.

Nine invoices relating to the sales of a spray ‘SPA’, dated 06/05/2008 until 06/04/2010, for a considerable amount (for reasons of confidentiality the amount will not be revealed).

Communication of the Belgian Health Minister, dated 02/09/2003, giving to the ‘SPA’ effervescing spray a, so called, cosmetics notification number, with its English translation.

An extract from the website www.sothys.com showing the different products, such as softening body gel, soft conditioner, instant radiance shampoo, instant radiance ampoules for the face, smoothing instant radiance care, exfoliating facial scrub, hand cream, deodorant, make up remover lotion, marketed under ‘Eau Thermale Spa™’ or ‘SPA energie vegetale’, and also showing that ‘Sothys’ and ‘Yves Rocher’ are the exclusive partners of Spa by mentioning them on the packages, dated 28/01/2009.

Copy of an extract of ‘Le Livre Vert de ma Beauté’ (2008), showing use of the products under the trade mark ‘SPA VEGETAL’.

Copy of an extract of ‘Le Livre Vert de ma Beauté’ (2009), showing use of the products under the trade mark ‘SPA VEGETAL’, together with a price list of all the products.

Copy of an extract of ‘Le Livre Vert de ma Beauté’ (2010), showing use of the products under the trade mark ‘SPA VEGETAL’.

Printouts from the website www.yvesrocher.be on 16/03/2011, showing use of the products under the trade mark ‘SPA VEGETAL’.

Extracts from the annual reports of Spadel for the years 2008-2013 regarding the spray ‘SPA’ and the use of the trade mark ‘SPA’ for skin care products on the basis of a license granted to Sothys Paris, with its translation.

An article from Knack.be regarding the Sothys Eau Thermal Spa with a photo of the products, dated 09/12/2014.

Copy of an advertisement of Sothys Eau Thermale Spa in the magazine ‘PROESTHETIC’ No 37 of September 2014.

Extracts from the annual reports of Spadel for the years 2014-2015 regarding the spray ‘SPA’ and the use of the trade mark ‘SPA’ for skin care products on the basis of a license granted to Sothys Paris, with its translation.

Copies of invoices issued by Diotima, for products of Sothys delivered to Belgium and Luxembourg in the years 2010-2014.

Copy of 3 labels affixed to the goods of the opponent showing that the mineral water ‘SPA’ is recognised by the Royal Academy of Medicine in Belgium as being highly beneficial for the health and showing also the use on the labels of the word ‘SPA’ alone.

Copies of promotional actions in Belgian supermarkets regarding the sale of ‘SPA’ waters, in particular for an action valid until 30/05/2008 and another one for the period of 01/08/2010 to 15/09/2010 and for the period of 10/11/2013 to 23/11/2013.

Copy of a promotional action regarding the ‘SPA REINE (FIGURATIVE)’ valid in Belgium and Luxembourg until 15/06/2008.

Extracts of Spadel’s annual reports 2011-2013 showing use of the trade mark ‘SPA’ for mineral water and other non-alcoholic drinks, turnover, advertisement and sponsoring. Spa Monopole is a company wholly owned by SPADEL.

Copy of an extract of the Belgian newspaper ‘La Libre Belgique – Brabant Wallon’, dated 09/10/2014 relating to the trade mark ‘SPA’ on occasion of the 125th anniversary of the springs’ protection zone.

The Opposition Division finds that the above mentioned evidence proves that the earlier trade marks have been genuinely used in the course of trade which will, hereunder, be described in more detail. The Opposition Division will, regarding the earlier Benelux trade mark registration No 389 230, simultaneously, examine the proof of use and the reputation of this earlier mark.

Benelux trade mark registration No 372 307 for cosmetics in Class 3

The invoices, the communication of the Belgian Health Minister and extracts from different years of ‘Le Livre Vert de ma Beauté’ show that the place of use is the Benelux. This can be inferred from the language of the documents (French or Dutch), which is typical of the majority of the descriptions intended for the Benelux, the prices are in Euros and the address on the invoices is in Belgium. Since Belgium is a substantial part of the Benelux group of countries, the evidence relates to the relevant territory of the Benelux.

Even though some evidence is not dated inside of the relevant time frame, there is still sufficient evidence, such as the extract of ‘Le Livre Vert de ma Beauté’, dated 2010, the extract from the website www.yvesrocher.be (16/03/2011), an extract of the annual report for the years 2008-2013 and one for the years 2014-2015, the article from Knack.be (09/12/2014), an advertisement in the magazine ‘PROESTHETIC’ (September 2014), which is dated within the relevant period and, therefore, sufficiently indicates the period of use. The applicant, in its observations of 28/12/2016, points out that most of the documents do not bear indications regarding time and place or are out of the relevant time frame. However, the Opposition Division does not agree with this statement. The website, for example, from yvesrochter.be is printed out on 16/03/2011, meaning that these products were offered for sale inside of the relevant time frame. The extract from the catalogue ‘Le Livre Vert de ma Beauté’ (2010) is also dated inside of the relevant period. Furthermore, as already mentioned above, there are also some annual reports covering the years 2008-2015 and an advertisement in an aesthetic magazine in 2014, which are all inside of the time period. On some products, apart from French, also Dutch is mentioned, one of the languages spoken in the Benelux countries. Some documents, such as the packages and pictures of products are undated, but it is normal that some documents cannot be dated. However, the evidence, taken as a whole, reaches the minimum level necessary to establish genuine use, as will be further explained below.

The Opposition Division takes note of the fact that the Benelux trade mark registration No 372 307 ‘SPA’ is subject of two licences dating from 2003: one with ‘Laboratoire de Biologie Vegetale Yves Rocher’ for beauty and bodycare products and the other with ‘Sothys’ for skincare products. The former licencee markets products under the name ‘SPA Energie Vegetale’, whereas the latter uses the name ‘Thermale Spa™’. The evidence shows that the mark has also been used as registered, this contrary to the applicant’s argument in its observations of 28/12/2016 pointing out that the mark is used in a different form from the one which is registered and alters its distinctive character. In the present case, the earlier mark, Benelux trade mark registration No 372 307, ‘SPA’, is a word mark. However, for example on the product packages and in some of the promotional evidence, it appears as , or . Article 15(1)(a) EUTMR mentions that use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as it does not alter the distinctive character of the trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006), T-194/03, Brainbridge, EU:T:2006:65, § 50). Nevertheless, in this case the alterations confined to the stylisation of the script do not constitute an alteration of the distinctive character of the word mark ‘SPA’. In addition, regarding the words ‘eau thermale’ and ‘energie vegetale’, neither do these alter the distinctive character of the mark, because these elements are less distinctive; the reference to ‘eau thermale’ is merely descriptive, the same is applicable to ‘energie vegetale’, since it refers to vegetable-based materials that have gone into the ingredients of those products and that are intended to give a ‘revitalising sensation’. Taken as a whole, the evidence submitted is sufficient to prove use of the ‘SPA’ mark (Benelux No 372 307), in a form which does not substantially alter its distinctive character.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The extracts from the annual reports for the years 2008-2013 and 2014-2015 and the invoices issued by Diotima that were filed show that the total amount of products sold to companies during the whole five-year period between 2010 and 2015 amounts to a considerable number that for reasons of confidentiality cannot be revealed. All together they provide the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration, and frequency of use and give sufficient indications concerning the extent of the use of the earlier mark.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The earlier mark is registered for Class 3: cosmetics. Since the evidence mentions all kinds of products, such as softening body gel, soft conditioner, instant radiance shampoo, instant radiance ampoules for the face, smoothing instant radiance care, exfoliating facial scrub, hand cream, deodorant, make up remover lotion, effervescing spray, that are all included in the broad category of cosmetics, the evidence filed by the opponent does show genuine use of the trade mark for all the goods covered by it. The communication of the Belgian Healthy Ministry, in addition, confirms that, for example, the ‘SPA’ spray is considered as being a cosmetic preparation.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory for cosmetics in Class 3.

In addition, the opponent refers to some decisions in which the proof of use of the earlier trade mark ‘SPA’ in the Benelux for Class 3 has already been admitted by different units of the Office, among others: decision of 05/11/2010, Opposition No 1 452 160 – SPAFIRM; decision of 14/02/2011, Case R 573/2010-2 – XO SPA; decision of 14/02/2013, Case R 2186/2010-2 – SENSORI SPA.

Benelux trade mark registration No 389 230 for mineral water and aerated water in Class 32

The evidence relates to the relevant period and shows that on account of the intensity and duration of use and the value associated with the mark a significant part of the relevant public recognises the trade mark ‘SPA’ and knows the goods marketed under this sign. The earlier trade mark has been subject to long-standing and intensive use and is generally known in the sector of mineral waters, for which it enjoys a leading position in the Benelux market, and represents the biggest part of the Belgian market in the field of bottled mineral waters (see, inter alia, ‘Le Grand Livre de l’Eau, Histoire, Traditions, Environnement, Art de Vivre’). This is also attested by a variety of independent sources, impressive figures, such as ‘SPA’ being the leader with 23,6% of the market and the production of 500.000.000 litres per year, publications in books and magazines, press releases, decisions of the national Courts. Furthermore, the continuous advertising and promotional campaigns since 1923 are particularly significant. There is also an extract showing that the trade mark ‘SPA’ is rated as the 7th most valuable Belgian trade mark and some extracts from ‘Trends Magazine Top 5000’ showing that the opponent ranks third as regards the breweries and soft drinks sector.

In particular, the sales figures and the global advertising budget featuring the earlier trade mark during the period from 1990 to 2014 (which for reasons of confidentiality and as requested by the opponent cannot be revealed in this decision) are very impressive. Even though the figures are not provided by an independent third party, since they appear in the Declaration signed by Mr Marc du Bois, Managing Director of S.A. Spa Monopole N.V., together with the remaining evidence, they allow the conclusion that the mark ‘SPA’ is widely recognised by the Benelux consumers as a very well-known mark in relation to mineral water and aerated water.

From all the above mentioned it can be concluded that the ‘SPA’ reputation is beyond serious dispute. The opponent has provided cogent and incontrovertible evidence that the trade mark in question has been put to intensive use. The evidence demonstrates that it has sold substantial amounts of bottles of water. It is, therefore, reasonable that the trade mark in question must have come to the attention of a large number of consumers in the Benelux, especially as the opponent has also supplied so much evidence regarding the ‘SPA’ brand. It shows unequivocally that the mark shows a high degree of recognition among the relevant public.

The Opposition Division, and also the opponent in its observations, refers to judgments of the General Court which acknowledge a high reputation of the mark ‘SPA’ for mineral waters (see judgment of 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179; 12/11/2009, T-438/07, SpagO, EU:T:2009:434; 19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215. In the ‘Mineral Spa’ case the General Court stated that ‘[…] the reputation of the earlier mark [SPA] in the Benelux for mineral water is, at the very least, very significant’ and it refers to several other decisions of the Boards of Appeal (decision of 02/03/1999, R 1231/2005-4 and R 1250/2005-4, ‘WINE SPA’, § 34; 26/04/2012, R 264/2011-4, ‘SPA SERENITY’, § 51; 26/10/2012, R 2157/2011-4, ‘VICHY SPA’, § 36).

Furthermore, the reputation of the earlier mark ‘SPA’ for goods in Class 32 has also 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 Benelux countries in respect of mineral waters and aerated waters.’

The opponent claims reputation for the earlier mark ‘SPA’ for mineral water and aerated water in Class 32. From the above cited evidence, as well as from the mentioned national court decisions, the General Court and the Boards of Appeal, the Opposition Division is of the opinion that the evidence shows the reputation of the earlier mark regarding these goods.

Therefore, taken all the evidence as a whole, the Opposition Division finds that the mark ‘SPA’ has not only proven use, but also enjoys a reputation in the Benelux for mineral water and aerated water.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion 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 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 goods

The goods on which the opposition is based are the following:

Benelux registration No 372 307

Class 3: Cosmetics.

Benelux registration No 389 230

Class 32: Mineral water and aerated water.

The contested goods are, after a limitation made by the applicant, the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; foodstuffs and dietetic substances for medical or veterinary purposes; disinfectants; tanning pills; sea water for medicinal bathing; goulard water; mineral waters for medical purposes; thermal water; nutritional supplements; dietetic foods adapted for medical use; corn rings for the feet; fumigating pastilles; antioxidant pills; sanitary towels; styptic preparations; oxygen baths; bath preparations for medical purposes; vaginal washes; balms for medical purposes; frostbite salve for pharmaceutical purposes; sanitary wear; bandages for dressings; dietetic beverages adapted for medical purposes; compresses; antiseptic cotton; aseptic cotton; cotton for medical use; bunion pads; air deodorising preparations; deodorants for clothing and textiles; disinfectants for hygiene purposes; mud for baths; medicinal oils; slimming pills; aloe vera preparations for pharmaceutical purposes; medicinal hair growth preparations; contact lens cleaning preparations; eye-washes; vitamin preparations; medical preparation for slimming purposes; bath (therapeutic preparations for the -); sunburn ointments; callouses (preparations for -); burns (preparations for the treatment of -); pharmaceutical preparations; pharmaceutical preparations for treating dandruff; pharmaceutical preparations for skin care; remedies for perspiration; remedies for foot perspiration; mineral water salts; smelling salts; salts for mineral water baths; food nutritional supplements containing vitamins; herbal preparations for medical purposes; herbal supplements; extracts of medicinal herbs; herbal beverages for medicinal use; vitamins; vitamin preparations; vitamin food supplements; mineral preparations for medical purposes; mineral food supplements; protein preparations and supplements; creatine preparations and supplements; vitamin food supplements; vitamin and mineral supplements; diet supplements; food supplements in powdered drink mix and beverage forms; nutritional additives and supplements; nutritional preparations; food supplements; dietary and nutritional supplements; tonics for medical purposes; preparations and substances for use in the treatment of obesity; slimming aids; preparations for promoting weight loss; preparations for promoting weight gain; preparations for promoting muscle gain; protein based drinks, compositions for the preparation thereof; creatine-based drinks, compositions for the preparation thereof; dietary beverages, compositions for the preparation thereof; dietetic and energy-giving foodstuffs for medical purposes; dietetic food supplements for medical purposes.

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.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 3

The contested cosmetics (mentioned twice) are identically contained in both lists of goods (BEN No 372 307).

The contested cosmetics, namely hair lotions; nail art stickers; adhesives for cosmetic purposes; adhesives for affixing false hair; adhesives for affixing false eyelashes; aloe vera preparations for cosmetic purposes; astringents for cosmetic purposes; balms other than for medical purposes; cotton sticks for cosmetic purposes; make-up; false eyelashes; make-up powder; hair dyes; cosmetics preparations for eyelashes; eyebrow cosmetics; cosmetic creams; skin whitening creams; bleaching preparations [decolorants] for cosmetic purposes; massage gels other than for medical purposes; dental bleaching gels; petroleum jelly for cosmetic purposes; greases for cosmetic purposes; hair spray; nail polish; almond milk for cosmetic purposes; lotions for cosmetic purposes; lip glosses; polish; mascara; beauty masks; eyebrow pencils; cosmetic pencils; decorative transfers for cosmetic purposes; cosmetic kits; oils for toilet purposes; oils for cleaning purposes; oils for cosmetic purposes; cotton wool for cosmetic purposes; pumice stone; pomades for cosmetic purposes; sun-tanning preparations [cosmetics]; cosmetic preparations for baths; hair waving preparations; cosmetic preparations for slimming purposes; cosmetic preparations for skin care; depilatories; make-up preparations; mouth washes, not for medical purposes; nail care preparations; smoothing preparations [starching]; make-up removing preparations; lacquer-removing preparations; color-removing preparations; lipsticks; bath salts, not for medical purposes; shampoos; dry shampoos; talcum powder, for toilet use; cosmetic dyes; tissues impregnated with cosmetic lotions; false nails; all the aforesaid goods for use in wellness industry (including spas, health resorts, saunas and thermal baths) are included in the broad category of the opponent’s cosmetics (BEN No 372 307). Therefore, they are identical.

The contested cosmetics namely essential oils, aromatics [essential oils]; joss sticks; ethereal oils; essential oils of cedarwood; essential oils of lemon; gaultheria oil; jasmine oil; lavender oil; almond oil; rose oil; all the aforesaid goods for use in wellness industry (including spas, health resorts, saunas and thermal baths) are similar to the opponent’s cosmetics (BEN No 372 307). These goods have the same purpose, have the same distribution channels and target the same relevant public.

The contested soaps (mentioned twice); almond soap; shaving soap; cakes of soap; soap for foot perspiration; antiperspirant soap; deodorant soap; all the aforesaid goods for use in wellness industry (including spas, health resorts, saunas and thermal baths) are similar to the opponent’s cosmetics (BEN No 372 307). They have the same distribution channels, target the same public and are manufactured by the same kind of undertakings.

The contested breath freshening sprays; breath freshening strips; all the aforesaid goods for use in wellness industry (including spas, health resorts, saunas and thermal baths) are similar to a low degree to the opponent’s cosmetics (BEN No 372 307). These goods have the same distribution channels and target the same public.

Contested goods in Class 5

The contested pharmaceutical preparations (mentioned several times); tanning pills; styptic preparations; oxygen baths; bath preparations for medical purposes; balms for medical purposes; frostbite salve for pharmaceutical purposes; medicinal oils; slimming pills; aloe vera preparations for pharmaceutical purposes; medicinal hair growth preparations; eye-washes; medical preparations for slimming purposes; sunburn ointments; callouses (preparations for -); burns (preparations for the treatment of -); pharmaceutical preparations for treating dandruff; pharmaceutical preparations for skin care; remedies for perspiration; remedies for foot perspiration; herbal preparations for medical purposes; extracts of medicinal herbs; herbal beverages for medicinal use; mineral preparations for medical purposes; tonics for medical purposes; preparations and substances for use in the treatment of obesity; slimming aids; preparations for promoting weight loss; preparations for promoting weight gain; preparations for promoting muscle gain are similar to the opponent’s cosmetics (BEN No 372 307). Cosmetics include a list of care preparations intended to be applied to the human body for cleansing, beautifying, promoting attractiveness, altering the appearance or giving it a pleasant smell or odour, without affecting the body’s structure or functions. Pharmaceuticals on the other hand comprise products, such as skin or hair care preparations, with medical properties. They may coincide in purpose with cosmetics. Moreover, they share the same distribution channels, since they can be found in pharmacies, drugstores or other specialised shops. They are directed at the same public and are often manufactured by the same companies.

The contested sea water for medicinal bathing; goulard water; mineral waters for medical purposes; thermal water are similar to the opponent’s mineral water in Class 32 (BEN No 389 230). These goods have the same nature, given that they are kind of waters. They are often produced by the same or similar undertakings and they are offered to the same end consumer. They are offered through the same commercial distribution channels.

The contested sanitary preparations for medical purposes; sanitary towels; sanitary wear are similar to a low degree to the opponent’s cosmetics (BEN No 372 307). These goods may share the similar purpose of hygiene and/or disinfecting the human body, they can be found in pharmacies or other specialised shops and are often manufactured by the same companies. Also they may have the same end-user.

The contested mud for baths; bath (therapeutic preparations for the -); mineral water salts; smelling salts; salts for mineral water baths are similar to a low degree to the opponent’s cosmetics (BEN No 372 307). These goods have the same distribution channels, target the same public and can be manufactured by the same kind of undertakings.

The contested veterinary preparations refer to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in animals; vaginal washes; air deodorising preparations; deodorants for clothing and textiles are all kinds of sanitary preparations, however, for specific purposes, e.g. vaginal washes or deodorants/deodorising preparations for clothing and textiles and for the air; disinfectants; antiseptic cotton; disinfectants for hygiene purposes; contact lens cleaning preparations are all kinds of disinfectants that contain chemical or biological substances used for cleaning and are directed at the removal of undesired, sometimes unhealthy, elements (stains, dirt, grease, etc.); foodstuffs and dietetic substances for medical or veterinary purposes; nutritional supplements; dietetic foods adapted for medical use; antioxidant pills; dietetic beverages adapted for medical purposes; vitamin preparations; food nutritional supplements containing vitamins; herbal supplements; vitamins; vitamin preparations; vitamin food supplements; mineral food supplements; protein preparations and supplements; creatine preparations and supplements; vitamin food supplements; vitamin and mineral supplements; diet supplements; food supplements in powdered drink mix and beverage forms; nutritional additives and supplements; nutritional preparations; food supplements; dietary and nutritional supplements; protein based drinks, compositions for the preparation thereof; creatine-based drinks, compositions for the preparation thereof; dietary beverages, compositions for the preparation thereof; dietetic and energy-giving foodstuffs for medical purposes; dietetic food supplements for medical purposes are all kinds of dietetic substances or preparations consisting of vitamins; corn rings for the feet; bandages for dressings; compresses; aseptic cotton; cotton for medical use; bunion pads are all kinds of plasters or materials for dressings whose purpose is to support the healing process of a wound or an injury and fumigating pastilles are vermin destroying preparations and all these products are dissimilar to the opponent’s cosmetics in Class 3 (BEN No 372 307) and mineral water and aerated water in Class 32 (BEN No 389 230). Even though some of the goods are used for body care, they have a different nature and purpose. They are not complementary or in competition with each other, they target another public and even though they have the same distribution channels, such as drugstores or pharmacies, they are normally not placed so close to each other. These goods are normally produced by other kind of undertakings. None of these goods complement the opponent’s goods or vice versa, since none of the goods compared are connected in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods (23/09/2014, T-61/13, Nuna, EU:T:2014:804, § 54).

For the sake of completeness, with respect to the contested veterinary preparations, the mere fact that the broad term cosmetics can also include cosmetics for animals and not just for human use is not a sufficient argument to find a similarity between these. Furthermore, with respect to the contested dietetic substances or preparations consisting of vitamins, it is true that the General Court held articles for body and beauty-care similar to food supplements and dietetic substances not for medical use, since they have the same purpose, they are produced by the same companies and they have the same distribution channels (08/09/2008, T-374/06, Epican, EU:T:2008:313, § 39-41). There is, however, a substantial difference between these non-medical products and the nutritional and dietetic substances for medical use in the case at hand. The borderline between nutritional and dietetic substances for medical use and their counterparts for non-medical use is a clear-cut one. These two ranges of goods will not be confused by the consumers. Therefore, the Court’s reasoning does not apply to the goods in the case at hand. Unlike the food supplements and dietetic substances in the ‘Epican’ case, the goods in the present case have a medical purpose. They are used to treat or prevent diseases. Therefore, they have a significantly different purpose from cosmetics in Class 3, which are used to maintain or improve physical beauty. These goods have also a different nature and method of use as cosmetics. Nutritional and dietetic substances are usually pills that have to be taken orally, whereas cosmetics take the form of lotions, creams or balms that are applied to the skin by gently rubbing, spraying or rolling. The contested goods are usually manufactured by pharmaceutical companies which generally do not produce cosmetics. The goods in question are not interchangeable and therefore not in competition. Lastly, it should be noted that contrary to food supplements for non-medical purposes, the nutritional and dietetic substances in the present case are only available in pharmacies. This is usually not the case for cosmetics. Even if the goods would be sold in the same pharmacies or specialised shops, they would be placed in separate sections within these outlets. Therefore, the goods in question do not share the same distribution channels. The disparity between these goods and the opponent’s goods in Class 32 is even greater given their completely different nature and purpose.

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 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.

In the present case, the goods found to be identical or similar (to various degrees) are directed at both the public at large, for example soaps in Class 3, and at professionals in the medical and healthcare field. Some of the contested goods, such as the broad category of the applicant’s pharmaceutical preparations can include preparations that are relatively cheap and are sold directly to the consumer without prescription, while it can also include other goods that are more specialised drugs for treating serious health problems. It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Considering all the above, the level of attention varies from average to above average.

The signs

SPA

Earlier trade marks

Contested sign

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, Sabèl, EU:C:1997:528, § 23).

The earlier marks are word marks composed of the word ‘SPA. In case of word marks, the word itself is protected, not its written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters. The contested sign is a figurative mark composed of the word ‘DOT’, of which the letters ‘D’ and ‘T’ are written in black bold capital letters with in the middle a circle with small circles inside of different shades of grey, similar to the letter ‘O’. Inside of this circle appears the word ‘SPA’, in a smaller typeface in capital letters.

The letters ‘D’, ‘T’ and the circle in the middle of the contested sign are the most dominant elements, due to their size.

The earlier marks ‘SPA’ refer 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, EU:T:2005:179, § 44; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81 and 25/03/2009, T-21/07, Spaline, EU:T:2009:80). The use of the word ‘SPA’ has spread extensively throughout the world during recent decades, due to the development of tourism and the interest in wellness, including in the Benelux countries. In this regard the Opposition Division does not agree with the 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 not for the goods in Class 3. Consequently, the earlier mark ‘SPA’ is perfectly distinctive for the goods in this class. In addition, the normal degree of distinctiveness for the earlier mark for goods in Class 3 has also already been established by the General Court and the Boards of Appeal of the Office (25/03/2009, T-109/07, SPA Therapy, EU:T:2009:81, § 24, 28; 25/03/2009, T-21/07, Spaline, EU:T:2009:80, § 31; 27/02/2015, T-377/12, OLEOSPA, EU:T:2015:121, § 42; 17/03/2015, T-611/11, MANEA SPA, EU:T:2015:152; decision of 12/05/2010, R 392/2009-1, SPADERM (FIGURATIVE); decision of 04/02/2013, R 2186/2010-2, Sensori Spa, § 10; decision of 29/04/2013, ARETE SPA, R 1594/2012-4, § 44; decision of 16/01/2014, R 1516/2012-4, Spa Wisdom; decision of 28/08/2012, R 2154/2010-2, EDEN SPA; decision of 11/09/2014, R 0258/2014-1, PALAISPA), where the term was considered distinctive for cosmetic products. 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 cosmetics in the Benelux countries. The word ‘SPA’, used in the context of cosmetic products 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 in respect to cosmetic products. In sum, the sole element ‘SPA’ of one of the earlier marks has a normal degree of distinctiveness in relation to the goods in Class 3. Furthermore, as can be deduced from the above mentioned, the earlier mark ‘SPA’ for the goods in Class 32 has acquired an enhanced distinctiveness, despite the fact that the mark is also inherently distinctive.

The word ‘SPA’ in the contested sign is perceived as having the same meaning as in the earlier marks. This element is normally distinctive for the contested goods in Classes 3 and 5. The letters ‘D’ and ‘T’ with the circle in the middle is probably perceived as being the word ‘DOT’, as the circle is similar to the letter ‘O’. The word ‘DOT’ has no meaning in any of the Benelux languages. Even if it would be associated with the English word ‘dot’, meaning: ‘a very small round mark, for example one that is used as the top part of the letter ‘i’, as a full stop, or as a decimal point’ (see Collins English Dictionary online), it has no meaning in relation to the goods concerned. The small circles inside of the circle in the middle do not refer to any concept in particular. Consequently, there is no element that is more distinctive than others for the goods in Classes 3 and 5.

Visually, the signs coincide in the word ‘SPA’, meaning that the element ‘SPA’ of the earlier marks is included in the contested sign. Even though in the contested sign it is less dominant due to its size, it can certainly not be overlooked, as it is placed in the middle of the circle and clearly visible. Furthermore, this element in the contested sign is also normally distinctive. The marks differ in the additional letters ‘D’ and ‘T’ and in the circle in the middle, similar to the letter ‘O’, as pointed out above, which are also distinctive.

Regarding the figurative elements in the contested sign in the form of small circles, the Opposition Division points out the following: when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

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 relevant territory, the pronunciation of the signs coincides in the syllable /SPA/, present identically in the signs under comparison. The pronunciation differs in the sound of the word /DOT/, which has no counterpart in the earlier marks. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning to the extent that they both refer to the concept of ‘SPA’, the signs are conceptually similar to a high degree, for that part of the public that would perceive the word ‘DOT’ as meaningless. However, for another part of the public that perceives the word ‘DOT’ as having a meaning, the contested sign contains an additional concept, which is not shared by the earlier marks and for that part of the public, the marks are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

Distinctiveness of the earlier marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

Regarding the earlier mark, Benelux trade mark registration No 372 307, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of this earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal for the goods in Class 3.

Regarding the earlier mark, Benelux trade mark registration No 389 230, according to the opponent the earlier trade mark has a reputation in the Benelux countries in connection with all the goods for which it is registered and on which the opposition is based, namely mineral water and aerated water in Class 32. Such claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, § 18). Having examined the material of reputation simultaneously with the evidence for proof of use in the above section ‘PROOF OF USE, Benelux trade mark registration No 389 230…’), the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market for the goods in Class 32.

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 or, as the case may be, from economically-linked undertakings.

The contested goods in Classes 3 and 5 have been found to be partly identical or similar (to various degrees) and partly dissimilar. The level of attention by the consumer in question varies from average to above average. The earlier mark (BEN No 372 307) has a normal degree of distinctiveness for the goods in Class 3 and the earlier mark (BEN No 389 230) has acquired a high degree of distinctiveness for the goods in Class 32. The marks are visually similar to a low degree, phonetically to an average degree and conceptually they are either similar to a high degree or to an average degree.

In combined marks with words and devices, the public would focus more on the word elements. Furthermore, even though the term ‘SPA’ in the contested sign is not so dominant, it is placed in the middle of the circle/letter ‘O’ and clearly visible and plays an autonomous role within it, since it is separated from the remaining elements.

Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these goods.

The relevant consumers might be led, therefore, by the visual, aural and conceptual similarity of the word ‘SPA’, to believe that the identical and similar (to various degrees) goods in Classes 3 and 5 covered by the marks under comparison come from the same undertaking or economically-linked undertakings. Taking into account all the 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 ‘DOT’ and the figurative element in the form of a circle with small circles represents a new line or a parallel line of the opponent’s products (05/09/2007, T-220/06, JAKO-O Möbel und Spielmittel für die junge Familie GmbH, EU:T:2007:244). In the field of cosmetic products, for example, it is not unusual that manufacturers frequently put several lines of products on the market under different sub-brands.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Benelux trade mark registrations No 372 307 and No 389 230.

It follows from the above that the contested trade mark must be rejected for the goods in Classes 3 and 5 found to be identical or similar (to various degrees) to those of the earlier trade marks.

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 in Class 5, namely veterinary preparations; foodstuffs and dietetic substances for medical or veterinary purposes; disinfectants; nutritional supplements; dietetic foods adapted for medical use; corn rings for the feet; fumigating pastilles; antioxidant pills; vaginal washes; bandages for dressings; dietetic beverages adapted for medical purposes; compresses; antiseptic cotton; aseptic cotton; cotton for medical use; bunion pads; air deodorising preparations; deodorants for clothing and textiles; disinfectants for hygiene purposes; contact lens cleaning preparations; vitamin preparations; food nutritional supplements containing vitamins; herbal supplements; vitamins; vitamin preparations; vitamin food supplements; mineral food supplements; protein preparations and supplements; creatine preparations and supplements; vitamin food supplements; vitamin and mineral supplements; diet supplements; food supplements in powdered drink mix and beverage forms; nutritional additives and supplements; nutritional preparations; food supplements; dietary and nutritional supplements; protein based drinks, compositions for the preparation thereof; creatine-based drinks, compositions for the preparation thereof; dietary beverages, compositions for the preparation thereof; dietetic and energy-giving foodstuffs for medical purposes; dietetic food supplements for medical purposes.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division will now examine the opposition in relation to earlier Benelux trade mark registration No 389 230, for which the opponent claimed repute in the Benelux countries for mineral and aerated water in Class 32.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

The signs have already been compared above under the ground of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation of the earlier trade mark has already been examined above, and simultaneously, under the section of ‘PROOF OF USE’, where reputation has been found for the goods in Class 32. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. 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 marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an 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 (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ 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.

The Court established in the judgment of 12/03/2009, C-320/07 P, ‘NASDAQ/NASDAQ’, § 43, that the types of injury referred to in Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the earlier and the later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, it establishes a link between them, although it does not confuse them. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. According to § 45 of the same judgment, the existence of the link must be subject to an overall assessment taking into account all factors relevant to the circumstances of the case and, in particular, the degree of similarity between the marks at issue, the nature of the goods or services for which the marks at issue are registered, the relevant section of the public, the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character.

The types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (judgment of 23/10/2003, C-408/01, Adidas-Salomon and Adidas Benelux, EU:C:2003:582, § 27, 29 and 31; 27/11/2008, C-252/07, Intel Corporation, EU:C:2008:655, § 57, 58 and 66).

It is now apparent that the earlier mark has a reputation in the Benelux countries for mineral water and aerated water in Class 32.

The Court has held in the judgement of 27/11/2008, C-52/07, Intel Corporation, that the sections of the public relevant for each of the goods and services covered by the trade marks in dispute are a factor to be taken into account when considering whether or not the existence of a link can be justified. Therefore, before examining the opponent’s claim, the Opposition Division finds it useful to note that the opposition is directed against the remaining goods:

Class 5: veterinary preparations; foodstuffs and dietetic substances for medical or veterinary purposes; disinfectants; nutritional supplements; dietetic foods adapted for medical use; corn rings for the feet; fumigating pastilles; antioxidant pills; vaginal washes; bandages for dressings; dietetic beverages adapted for medical purposes; compresses; antiseptic cotton; aseptic cotton; cotton for medical use; bunion pads; air deodorising preparations; deodorants for clothing and textiles; disinfectants for hygiene purposes; contact lens cleaning preparations; vitamin preparations; food nutritional supplements containing vitamins; herbal supplements; vitamins; vitamin preparations; vitamin food supplements; mineral food supplements; protein preparations and supplements; creatine preparations and supplements; vitamin food supplements; vitamin and mineral supplements; diet supplements; food supplements in powdered drink mix and beverage forms; nutritional additives and supplements; nutritional preparations; food supplements; dietary and nutritional supplements; protein based drinks, compositions for the preparation thereof; creatine-based drinks, compositions for the preparation thereof; dietary beverages, compositions for the preparation thereof; dietetic and energy-giving foodstuffs for medical purposes; dietetic food supplements for medical purposes.

The Opposition Division will first examine in the following lists whether or not there exists a connection/link between the different goods:

foodstuffs and dietetic substances for medical or veterinary purposes; nutritional supplements; dietetic foods adapted for medical use; antioxidant pills; dietetic beverages adapted for medical purposes; vitamin preparations; food nutritional supplements containing vitamins; herbal supplements; vitamins; vitamin preparations; vitamin food supplements; mineral food supplements; protein preparations and supplements; creatine preparations and supplements; vitamin food supplements; mineral food supplements; vitamin and mineral supplements; diet supplements; food supplements in powdered drink mix and beverage forms; nutritional additives and supplements; nutritional preparations; food supplements; dietary and nutritional supplements; protein based drinks, compositions for the preparation thereof; creatine-based drinks, compositions for the preparation thereof; dietary beverages, compositions for the preparation thereof; protein preparations and supplements; dietetic and energy-giving foodstuffs for medical purposes; dietetic food supplements for medical purposes.

There exists a certain link between these goods and the earlier goods in Class 32. All these goods can be used for health reasons to create a healthy life style and even bought in the same kind of outlets. Some of the contested goods include diet beverages, but all are intended for healthcare, and whose intended purpose could, therefore, be the same as that of mineral water and aerated waters (i.e. healthy drinking). The only difference would be that those in Class 5 are medicated, whereas those in Class 32 are for general consumption, but these goods are also often used in combination, since mineral water is a key element in a diet, for which the dietetic substances can also be used. Furthermore, the ‘SPA’ mineral water has received also medical recognition and is recommended to mothers, babies and children due to its low mineral and salt content and its curative characteristics. It is essential to a healthy diet and has many medical implications. These goods can be used in the production of the contested goods (18/04/2011, R 613/2009-2, SPA/mastic Spa (figurative); 14/02/2011, R 573/2010-2, SPA/XO SPA, § 34). As can be seen both from official documents and from advertisements appended to the statement of grounds, ‘SPA’ waters are known in the Benelux countries for their high curative qualities. Since in those countries articles for body and beauty care are offered for sale in pharmacies, it is likely that given the close link between health care products and the renown of the ‘SPA’ water for its medicinal characteristics, the consumer will assume that the applicant’s goods in Class 5 are marketed by, or are under the control of, the opponent.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark for the goods listed in the above mentioned heading, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

veterinary preparations; disinfectants; corn rings for the feet; fumigating pastilles; vaginal washes; bandages for dressings; compresses; antiseptic cotton; aseptic cotton; cotton for medical use; bunion pads; air deodorising preparations; deodorants for clothing and textiles; disinfectants for hygiene purposes; contact lens cleaning preparations.

However, the link with respect to the above mentioned products is much less likely, which has also been confirmed by the Board of Appeal in its decision of 30/11/2016, R 2477/2015-2, SPA/DOT SPA COSMETICS. These goods are aimed both at the general public and at professionals who are reasonable well informed and reasonably observant and circumspect. The link between the sectors concerned by the products is by far too remote. All these products consist of veterinary preparations, specific sanitary preparations, disinfectants and all kinds of plasters and materials for dressings. On the other hand, the opponent enjoys reputation for mineral water and aerated water, i.e. drinking water for human consumption. The nature, function and purpose of these goods are clearly different. They are targeted at different consumers who acquire them for a different reason. The goods are sold in different outlets and belong to unrelated business sectors, as it is unlikely that a company producing veterinary preparations or very specific sanitary preparations, such as vaginal washes, also produces drinking water and vice versa. The further the respective goods are, industrially and commercially, placed from each other, the more unlikely it will be that the relevant public will make an association between the marks. Here there are huge differences between the goods in respect of their nature, purpose, method of use, manufacturer, marketing means, etc., while complementarity or competition between them is lacking. The differing factors also make it highly unlikely that the relevant public would perceive the contested sign, as a new line of the opponent’s business that has been launched.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case the opponent claims the following:

The ‘SPA’ trade mark by Spa Monopole has been intensively and exclusively used for mineral waters since early 1921. The public in the Benelux territory is so familiar with the trade mark ‘SPA’ for mineral and aerated waters and other non-alcoholic beverages that it is highly probable that a similar trade mark including quite visibly the word ‘SPA’ will be associated with the earlier trade mark ‘SPA’ of the opponent and will, therefore, be a potential detriment to the distinctive character and high reputation of the earlier trade mark ‘SPA’. The use of the trade mark ‘DOT SPA (FIGURATIVE)’ will not only be detrimental to the reputation and distinctiveness of the earlier mark, but will also take unfair advantage of the reputation of the earlier mark in the Benelux territory in Class 32. The opponent has developed through numerous years a constant image of ‘purity’. The natural mineral water is uniquely suited to both pregnant and feeding mothers, babies and young children, because of its very low mineral and salt content. In addition, the mineral waters ‘SPA’ have been awarded the first prize for the quality of the mineral waters. This prize is attributed by CERAM, the European Centre for research in mineral waters and quotes: ‘A Belgian water that has reached a milestone in the history of natural mineral waters and that is today still recognised for its original purity and its constant quality’. According to the opponent, this image of health, beauty, purity and richness in minerals has been confirmed by the General Court in judgment of 19/06/2008, Case T-93/06, Mineral Spa, § 43 and also in several decisions of the Boards of Appeal (for example, decision of 16/01/2014, Case R 1516/2012-4, SPA WISDOM, § 32). The use of the contested sign ‘DOT SPA (FIGURATIVE)’ for goods that are not under the control of the opponent may have a negative impact on the reputation acquired. It will affect the image of purity and the highly beneficial qualities associated with the mineral waters ‘SPA’, because the consumers will be misled as to the nature of the goods. The applicant would take unfair advantage of the image and goodwill built up by the opponent over the years and in which he invested huge amounts of money in order to obtain and maintain such image. Therefore, it would be quite unfair to allow the applicant with its later mark ‘DOT SPA (FIGURATIVE)’ to ride along on the reputation and goodwill of the ‘SPA’ trade mark, without it having to undertake any investments to achieve a similar reputation. The benefits enjoyed by the applicant would thus not be based on its own merits but on the high reputation of the earlier mark in the Benelux territory. The latter would positively influence the perception of the relevant public towards the goods marketed under the applicant’s mark. Therefore, the applicant’s mark would potentially take unfair advantage of, or would be detrimental to, the distinctive character and reputation of the earlier mark ‘SPA’ given the proximity between some of the goods, as mentioned above.

In other words, the opponent claims that the use of the contested trade mark would take unfair advantage of the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, ROYAL SHAKESPEARE, EU:T:2012:348, § 48; and of 22/03/2007, T-215/03, VIPS, EU:T:2007:93, § 40).

As claimed by the opponent, the use of the contested mark ‘DOT SPA (FIGURATIVE)’ by the applicant will take unfair advantage of the opponent’s investment in the ‘SPA’ trade mark and the opponent’s reputation in the earlier mark. The opponent has invested money in developing and building the reputation of its earlier mark so that it is known by a large portion of the public in the Benelux countries, and the applicant would benefit from this reputation without expenditure.

In the view of the Opposition Division, the present case has features which identify it as a classic instance of one trade mark taking unfair advantage of the reputation of another. In the first place, the earlier mark is extremely well-known in a particular field, in this case, it is a leading brand in the field of mineral and aerated waters. Secondly, the earlier mark is quirky and distinctive. Thirdly, the contested sign is similar to the reputed earlier mark; although the contested sign contains the additional word ‘DOT’ and a figurative element in the form of a circle with small circles, normally the consumer focuses more on the word elements and the word ‘SPA’ is placed in the middle and can certainly not be overlooked, the addition of the word ‘DOT’ is not sufficient for the contested sign to be very different from the earlier mark, since the contested sign imitates the exact word ‘SPA’, the only element of which the earlier mark consists.

The notion of taking unfair advantage of distinctiveness covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods a sign which is widely known in the market, thus misappropriating its attractive powers and advertising value. This may lead to unacceptable situations of commercial parasitism, whereby the applicant is allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark, which may stimulate the sales of the applicant's goods to an extent which is disproportionately high in comparison with the size of its promotional investment.

As regards taking unfair advantage of distinctiveness, it is noted that misappropriation of the distinctiveness of the earlier mark presupposes an association between the marks which renders possible the transfer of attractiveness to the applicant's sign. An association of this kind will be more likely in circumstances where the earlier mark possesses a very strong distinctive character, where there is a special connection between the goods and services which allows for some of the qualities of the opponent's goods to be attributed to those of the applicant or where, in view of its special attractiveness, the earlier marks may be exploited even outside its natural market sector.

The more immediately and strongly the earlier mark is brought to mind by the later sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 41 and 43).

Therefore, the evaluation of detriment or unfair advantage must be based on an overall assessment of all the factors relevant to the case (including, in particular, the similarity of the signs, the reputation of the earlier mark, and the respective consumer groups and market sectors), with a view to determining whether or not the marks may be associated in a way which may prove injurious to the earlier trade mark, or which may allow the trade mark applied for to profit unduly from it.

The earlier mark is associated with an image of health, beauty, purity, richness in minerals and curative characteristics. The image reflects the prestige acquired by the ‘SPA’ trade mark and fulfils one of the functions of the trade mark, the advertising function, which consists of associating certain qualities with a mark.

This is explained thoroughly above in section d). Given that there is some connection between some of the goods in question, as set out in a very detailed manner above, it seems inevitable that the image of the earlier mark and the characteristics that it projects will be transferred to the applicant’s goods if they were marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of it being linked with the opponent’s ‘SPA’ mark in the minds of consumers in the Benelux territory. This could lead to an unacceptable situation in which the applicant was allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark, as it might stimulate the success of the applicant’s goods to an extent which was disproportionately high in comparison with the size of its promotional investment.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark for some of the contested goods.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. As seen above, the Opposition Division has already concluded that use of the contested trade mark would take advantage of the reputation of the earlier mark. It follows that there is no need to examine whether or types also apply.

e) Final conclusion

Considering all the above, the opposition is partially well founded under Article 8(5) EUTMR for some of the contested goods that were not rejected under Article 8(1)(b) ETMR already, namely foodstuffs and dietetic substances for medical or veterinary purposes; nutritional supplements; dietetic foods adapted for medical use; antioxidant pills; dietetic beverages adapted for medical purposes; vitamin preparations; food nutritional supplements containing vitamins; herbal supplements; vitamins; vitamin preparations; vitamin food supplements; mineral food supplements; protein preparations and supplements; creatine preparations and supplements; vitamin food supplements; vitamin and mineral supplements; diet supplements; food supplements in powdered drink mix and beverage forms; nutritional additives and supplements; nutritional preparations; food supplements; dietary and nutritional supplements; protein based drinks, compositions for the preparation thereof; creatine-based drinks, compositions for the preparation thereof; dietary beverages, compositions for the preparation thereof; dietetic and energy-giving foodstuffs for medical purposes; dietetic food supplements for medical purposes in Class 5. Therefore, the contested trade mark must be rejected for all these contested goods.

The opposition is not successful under this ground as the remaining goods are concerned, namely veterinary preparations; disinfectants; corn rings for the feet; fumigating pastilles; vaginal washes; bandages for dressings; compresses; antiseptic cotton; aseptic cotton; cotton for medical use; bunion pads; air deodorising preparations; deodorants for clothing and textiles; disinfectants for hygiene purposes; contact lens cleaning preparations.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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