SPA CENVAREE | Decision 2491226 – S.A. Spa Monopole, Compagnie fermière de Spa, en abrégé S.A. Spa Monopole N.V. v. Centara International Management Co., Ltd.

OPPOSITION No B 2 491 226

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

Centara International Management Co., Ltd., 25th Floor, Centara Grand at Central World 999/99 Rama 1 Rd., Phathumwan, Bangkok 10330, Thailand (applicant), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 491 226 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 13 445 309 for the figurative mark. The opposition is based, after a limitation by the opponent on 13/09/2016, on Benelux trade mark registration No 372 307 for the word mark ‘SPA’, in relation to which the opponent only invoked Article 8(1)(b) EUTMR, on Benelux trade mark registration No 389 230 for the word mark ‘SPA’, in relation to which the opponent only invoked Article 8(5) EUTMR and on Benelux trade mark registration No 693 395 for the word mark ‘LES THERMES DE SPA’ in relation to which the opponent invoked both Articles 8(1)(b) and 8(5) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registrations No 372 307 and No 693 395 based on the ground of Article 8(1)(b) EUTMR.

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.

BENELUX TRADE MARK REGISTRATION No 372 307:

The goods and services

The goods on which the opposition is based are, after a limitation on 13/09/2016, the following:

Class 3: Cosmetics.

The contested services are the following:

Class 44: Massage services; health spa services; health spas (health, hygiene and beauty care services); aromatherapy services; health counselling; manicuring; beauty salons.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 44

Although the goods and services in question are not identical, it is clear that some of the contested services are similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were similar to the goods of the earlier mark.

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 contested services in Class 44, which are assumed to be similar, are directed at the public at large, for example massage services in Class 44, and some are more specialised services directed at business customers with specific professional knowledge or expertise in the medical field, for example health counselling in Class 44. The degree of attention may vary from average to above average. Some of the services involved could affect a person’s state of health, for example also that kind of beauty treatments that are more intense, such as filler treatments. In these cases the level of attention will be above average.

The signs

SPA

Earlier trade mark

Contested sign

The relevant territories are composed 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 mark is a word mark 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 words ‘SPA’, written in dark brown capital letters in a fairly standard typeface and placed ‘inside’ of two curved vertical lines, one in beige and the other in dark brown, and at the bottom part appears the word ‘Cenvaree’, written in a fairly standard title case typeface in dark brown.

The earlier mark and the contested sign have no element which could be considered clearly more dominant (visually eye-catching). It is considered that all the elements have more or less a comparable visual impact and that neither of the elements can be held clearly more dominant than the others.

The earlier mark ‘SPA’ refers to the name of a Belgian town famous for its mineral and thermal sources, the Belgian racing circuit of Spa-Francorchamps and may also denote a reference to hydrotherapy such as hammams or saunas and is a generic term for health and wellness centres providing treatment services for the body based on hydrotherapy (12/11/2009, T-438/07, SpagO, EU:T:2009:434, § 28; 19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 31; 25/05/2005, T-67/04, Spa-Finders, 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.

The word ‘SPA’ in the contested sign is perceived as having the same meaning as in the earlier mark. This element is a non-distinctive element for the contested services in Class 44, since these services are offered in this kind of places for hydrotherapy, hammams and saunas. The word ‘Cenvaree’ is a meaningless term and the figurative elements in the form of two curved lines in beige and dark brown do not refer to any specific concept. Consequently, for the contested services in Class 44 the most distinctive parts are the word ‘Cenvaree’ and the figurative elements.

Visually, the signs coincide in the word ‘SPA’, meaning that the whole earlier mark is included in the contested sign, at the beginning, as it is placed on top of it and it is normally the beginning where the consumers focus more the attention. This element is, however, non-distinctive for the services in Class 44 of the contested sign. The marks differ in the additional word ‘Cenvaree’ and in the figurative elements of the contested sign, as pointed out above, which are the most distinctive parts, and those are not shared at all by the earlier mark.

The length of the signs may influence the perception of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The earlier mark consists only of three letters and it is, therefore, a relatively short mark, whereas the contested sign is a much more complex mark of which the verbal elements alone consist of eleven letters, ‘SPA’ (three letters) and ‘Cenvaree’ (eight letters), let alone the additional figurative elements.

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, which is to be considered a non-distinctive element in the contested sign. The pronunciation differs in the sound of the most distinctive word /Cen-va-ree/, a three-syllable-word, which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding word ‘SPA’ is non-distinctive it will, nevertheless, evoke the same concept in both signs. The remaining part of the contested sign is either meaningless or does not refer to any concept in particular. Therefore, the signs are similar to a low degree.

As the signs have been found similar (to a low degree) in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that the mark in question is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark under discussion here will rest on its distinctiveness per se. In the present case, the earlier trade mark 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 for the goods in Class 3 must be seen as normal.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically-linked undertakings.

The contested services in Class 44 have been assumed to be similar to the goods in Class 3 of the earlier mark. The level of attention by the consumer in question varies from average to above average. The marks are visually, aurally and conceptually similar to a low degree. The earlier mark has a normal degree of distinctiveness for the goods in Class 3.

It is important to bear in mind that the term ‘SPA’, which is the only common element of the signs, is a non-distinctive element for the contested services in Class 44, since this term merely designates the place where services of treatment of the human body are offered. Nowadays, it is not unusual that there exist saunas, spas and this kind of places that at the same time offer all kinds of health care and treatments, such as health counselling; health spa services. Hence, the presence of this coinciding word does not impinge upon the way the signs are perceived. The coincidence in this element cannot result in likelihood of confusion for the contested services in Class 44, because the word in question does not play a trade mark role in the contested sign. Indeed, it is only due to the presence of all the additional distinctive elements in the contested sign that it can function as an indicator of origin for the services in question. The Opposition Division is of the opinion that, notwithstanding a certain, albeit low, similarity between the signs, this will not cause consumers to confuse them. Even considering the assumed similarity of the contested services in Class 44 with the opponent’s goods in Class 3, there will be no likelihood of confusion in respect of such services.

Considering all the above, and even assuming that the goods and services are similar, the Opposition Division finds that there is no likelihood of confusion on the part of the public, for all the reasons set before. Therefore, the opposition must be rejected as far as it is based on Article 8(1)(b) EUTMR.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

The Opposition Division will proceed with the examination of earlier Benelux trade mark registration No 693 395.

BENELUX TRADE MARK REGISTRATION No 693 395:

a) The signs

LES THERMES DE SPA

Earlier trade mark

Contested sign

The relevant territories are composed of the Benelux countries.

The distinctiveness of the mark’s elements will be assessed in relation to the following services on which the opposition is based:

Class 44: Services rendered by a thermal establishment, including services relating to health care; baths, showers and massages.

The contested services are the following:

Class 44: Massage services; health spa services; health spas (health, hygiene and beauty care services); aromatherapy services; health counselling; manicuring; beauty salons.

The earlier mark is a word mark composed of the words ‘LES THERMES DE 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 and has already been described above.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive or weak elements.

The earlier mark ‘LES THERMES DE SPA’ will be perceived, as a whole, by the Benelux public, as referring to ‘public baths or hot springs (providing treatment or services for the body based on hydrotherapy) located in the city of Spa’. The city of Spa is a Belgian town famous for its mineral and thermal sources. The words ‘LES THERMES’ are two French words of which the word ‘LES’ is an article that belongs to the basic French vocabulary and the word ‘THERMES’ refers to ‘public baths or hot springs’. It will be understood by the whole Benelux public, since a similar word is used in Dutch and German, namely, respectively, ‘thermen’ and ‘Therme’. Furthermore, the relevant public will understand the word ‘DE’ as ‘coming from’ and the word ‘SPA’ is a city of Belgium, famed for its mineral and thermal sources. The words ‘THERMES’ and ‘SPA’ are also inherently weak for the services in Class 44 at stake and its distinctiveness only derives from the specific combination of all the four words together of which the earlier mark is composed. It must be concluded that the earlier mark enjoys only a low degree of inherent distinctiveness in relation to the services at stake as well.

Furthermore, as far as the contested sign is concerned and as already pointed out above, the element ‘SPA’ is considered to be non-distinctive in the context of the sign and its services, and in the particular circumstances of the present case. Consequently, for the contested services in Class 44 the most distinctive parts are the word ‘Cenvaree’ and the figurative elements.

Visually, the signs coincide only in the element ‘SPA’. However, this element falls at the end of the earlier mark, while it is placed at the top part (beginning) of the contested sign. Normally the consumer focuses more on the beginning of a mark. However, these coinciding elements are either, as pointed out above, non-distinctive (contested sign) or weak (earlier mark), since it refers to the Belgian town of Spa which is famous for its mineral and thermal sources. Moreover, the earlier mark is a word mark, whereas the contested sign is a figurative one. Furthermore, the contested sign has some more distinctive elements, such as the figurative elements in the form of two curved vertical lines and the word ‘Cenvaree’ that are not shared by the earlier mark. The earlier mark also contains the words ‘LES THERMES DE’ that, even though these are not that distinctive, are all elements which are not shared by the contested sign.

Therefore, as the signs coincide in an element which is non-distinctive in the contested sign and weak in the earlier mark, it is concluded that the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark is pronounced as /LES/ /THER-MES/ /DE/ /SPA/ or /LES/ /THERMES/ /DE/ /SPA/, depending on the language, and the contested sign as /SPA/ /Cen-va-ree/. While in the earlier mark the pronunciation of the element /SPA/ is preceded by the sound of the words /LES/ /THERMES/ /DE/, in the contested sign the element /SPA/ is followed by the sound of the word /Cenvaree/, which have no counterparts at all in the earlier mark and in the contested sign. The contested sign and the earlier mark have also a different rhythm and intonation. Furthermore, as pointed out already in the previous paragraph, the coinciding elements are either non-distinctive or weak. Consequently, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the earlier mark, as already explained above, refers to ‘public baths or hot springs located in the city of Spa’, the word ‘SPA’ in the contested sign, even though it is a non-distinctive element, refers 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. The other elements in the contested sign are meaningless and do not refer to any particular concept. Therefore, the signs are not similar conceptually.

Consequently, for all the above mentioned reasons, as the signs merely coincide in elements which lack any distinctiveness (contested sign) or are weak (earlier mark), they are overall dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark was to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent with respect to this earlier mark.

Given that the opposition is not successful under Article 8(1)(b) EUTMR, it is necessary to examine the other ground on which the opposition is based, namely Article 8(5) EUTMR. The Opposition Division will first examine Article 8(5) EUTM with respect to earlier Benelux trade mark registration No 693 395, followed by earlier Benelux registration No 389 230.

REPUTATION – ARTICLE 8(5) EUTMR – Benelux registration No 693 395

The opponent claims reputation for earlier Benelux trade mark registration No 693 395 for services in Class 44.

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.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or 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

As the signs coincide in elements which are either non-distinctive or weak, it is concluded that the signs are not visually, aurally or conceptually similar and they give as well a different overall impression.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

Given that the opposition is not successful under Articles 8(1)(b) and 8(5) EUTMR for earlier Benelux trade mark registration No 693 395, it is necessary to examine the other earlier mark on which the opposition is also based and for which reputation has been claimed, namely Benelux trade mark registration No 389 230.

REPUTATION – ARTICLE 8(5) EUTMR – Benelux registration No 389 230

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 water and aerated water in Class 32.

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.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or 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 (Botolist/Botocyl, § 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.

The signs

The signs have already been compared above under the ground of Article 8(1)(b) EUTMR and this mark is identical (word mark ‘SPA’) to one of the earlier marks which has already been examined. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the Benelux countries for goods in Class 32.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

The contested trade mark was filed on 10/11/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the Benelux countries prior to this date. The evidence must, furthermore, show that the reputation was acquired in respect of the goods in connection with which reputation has been claimed by the opponent.

However, for reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier mark ‘SPA’ does have a reputation for all the goods on which the opposition is based, namely mineral water and aerated water in Class 32.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to a low degree. 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, and of 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).

The earlier mark is assumed to have 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 services: Massage services; health spa services; health spas (health, hygiene and beauty care services); aromatherapy services; health counselling; manicuring; beauty salons in Class 44.

The Opposition Division will examine in the following part whether or not there exists a link with respect to these services in Class 44.

In the present case, the Opposition Division finds that it is unlikely that the relevant public will make a mental connection between the contested sign ‘SPA Cenvaree (FIGURATIVE)’ for the above mentioned services in Class 44 and the earlier mark ‘SPA’ with a reputation for mineral water and aerated water in Class 32.

It is true that the signs under comparison are to some extent similar insofar they coincide in the word ‘SPA’. However, this does not mean that the relevant public is likely to establish a link between them. When consideration is given to the services in question, it is clear that the similarities between the signs in dispute relate to an element which is non-distinctive in the contested sign. It has been shown above that ‘SPA’ has several meanings in the relevant territory. When used in the context concerned by the contested services in Class 44, the element ‘SPA’ will be perceived by reasonably observant (and informed) consumers as a generic name for a wellness centre where all of the contested services are offered. As such, the term ‘SPA’ is non-distinctive for the contested services.

As previously set out, the term ‘SPA’ in relation to the contested services in Class 44 is of little trade mark significance because, as a descriptive term, this element per se does not identify the commercial origin of the services at issue but, instead, it indicates the type of place in which these services are offered, also those services in the healthcare fields. The relevant consumer encounters the term ‘SPA’ ubiquitously in baths, saunas, body care and wellness institutions as indicating where the services in question are provided or referring to the services themselves. All this has already been explained previously.

Furthermore, the Opposition Division deems that it is not a common trend for enterprises in the field of beauty or heath care services to also act in the sector of beverages or foodstuffs. It cannot be said of these goods and services that it concerns a neighbouring or related market.

Therefore, in view of the feeble distinctive character of the element ‘SPA’, the similarities between the contested sign and the earlier trade mark are unlikely to bring the earlier trade mark to the mind of the average consumer. The element ‘SPA’ indicates a characteristic shared by a wide range of services which means that the consumer is more likely to associate it with the specific feature of the services that it describes rather than with another mark (30/04/2009, C-136/08 P, ‘Camelo’).

In other words, given that consumers of the relevant services in the Benelux countries very frequently encounter the term ‘SPA’ in a descriptive manner for the above mentioned contested services, there is no reason to suppose that the same consumer, when encountering the contested sign ‘SPA Cenvaree (FIGURATIVE)’, would make any mental link with the ‘SPA’ mark which is reputed for mineral water and aerated water in Class 32, as, in this context, the consumer will perceive the ‘SPA’ element in the contested sign as indicating characteristics of the contested services in question. In the present case, not only do the goods and services lack similarity, but there are no relevant points of contact.

Due to the visual and aural differences between the marks (the conceptual comparison has little impact for the services in Class 44), the differences between the goods and services in Class 32 versus 44 and the lengths of the marks at hand, taking all the above reasons together, the Opposition Division concludes that there exists no link between the contested services and the goods for which the opponent claimed and for which reputation is assumed and between the signs under comparison. The Opposition Division does not agree with the opponent, where it points out that there is a link between the marks. According to the opponent the trade mark ‘SPA’ is entirely included in the contested sign at the beginning and retains an independent distinctive role therein. Furthermore, the figurative element does not remove to the sign ‘SPA’ its independent distinctive character. It refers to a decision of the Board of Appeal of 19/06/2008, T-93/06, ‘MINERAL SPA’, § 32, where a link was established, also because the goods have a certain nexus with mineral water. However, in that case the goods were those in Class 3 and in Class 32 and it is true that the earlier mark is to be considered as having a normal distinctiveness regarding the goods in Class 3, but the word ‘SPA’ is not distinctive for the services in Class 44, which are the ones that have to be considered in this case.

Reputation is a requirement for succeeding in an opposition based on Article 8(5) EUTMR, but it is not enough on its own. Even the most famous of brands must submit to the additional requirement that the marks in question be sufficiently similar that consumers are likely to make a connection between the younger mark and the older, reputed mark. Owing to the differences between the marks on the visual and aural levels, the coincidence in a non-distinctive element and the huge differences in usage and provision between the services in dispute and the goods for which reputation is assumed, the Opposition Division is not persuaded that consumers will make the necessary connection in this case, which is essential for the application of Article 8(5) EUTMR and for unfair advantage to be taken of the distinctive character or repute of the earlier mark.

The opponent is of the opinion that in view of the high reputation of the word mark ‘SPA’ for goods in Class 32, the link will in casu be even more important for the services in Class 44, since the services have a certain link, since for these services the opponent’s goods may be used. Furthermore, it points out that the average Benelux consumer, when confronted with the contested sign, may believe that the thermal waters ‘SPA’ in Class 32 are now exploited in the beauty and health sector under the contested sign. However, the Opposition Division does not agree, because mineral water is used for many purposes and the fact that it is used for services in Class 44, namely for a kind of ‘SPA’-services, being a non-distinctive element, does not mean that for the relevant public the opponent’s mark would come to mind when confronted with the contested services. There is no clear link, as explained above, between these goods and services.

Taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute with respect to the services in Class 44, that is to say establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must also be rejected for the contested services in Class 44, based on earlier Benelux trade mark registration No 389 230.

Conclusion

Considering all the above, the opposition is not successful under this ground for earlier Benelux trade mark registration No 389 320, also insofar as the contested services in Class 44 are concerned.

Given that the opposition is not well founded under Article 8(5) CTMR it is unnecessary to examine the evidence of use filed by the opponent.

Likewise it is not necessary to examine the evidence of reputation, since the fact that no link will be made between the marks, as explained in much detail above, cannot be offset by the eventual reputation of the earlier mark.

The opponent, in its observations of 29/09/2015, also refers to previous decisions of the Office to support its arguments. However, even though the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, such as ‘SPA’ versus ‘FIRST SPAS COSMETICS (FIGURATIVE) (B 997 884); ‘SPA’ versus ‘Romantik Spa’ (B 717 480); ‘SPA’ versus ‘WSS World Spa Services (FIGURATIVE)’ (B 759 999); ‘SPA’ versus ‘SPA AT HOME’ (B 393 258); ‘SPA’ versus ‘ROCK SPA’ (B 1 075 557); ‘SPA’ versus ‘TEMPLE SPA’ (B 509 036); ‘SPA’ versus ‘BUDDHA SPA’ (B 841 801); ‘SPA’ versus ‘CLINIC’ALL SPA’ (B 1 725 202); ‘SPA’ versus ‘SPA ALLIANCE’ (B 1 606 386) and ‘SPA’ versus ‘PURE SPA’ (FIGURATIVE) (B 2 347 451), since the contested services also include those in Class 44, the outcome may not be the same. While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. Furthermore, the cases that are mentioned above also have some differences when compared to the present case. In B 997 884, the words ‘FIRST’ and ‘COSMETICS’, in B 717 480, the word ‘Romantik’, in B 759 999, the words ‘World’ and ‘Services’, in B 393 258, the words ‘AT HOME’, in B 509 036, the word ‘TEMPLE’, in B 1 725 202, the word ‘CLINIC’ALL’, in B 1 606 386, the word ‘ALLIANCE’ and in B 2 347 451, the word ‘PURE’ are also not that distinctive elements, like in the present case the word ‘Cenvaree’ and the figurative elements. In B 1 075 557, B 717 480, B 509 036, B 841 801, B 1 725 202, B 1 606 386 and B 2 347 451, the contested sign, furthermore, only consists of two words, ‘ROCK SPA’, ‘Romantik Spa’, ‘TEMPLE SPA’, ‘BUDDHA SPA’, ‘CLINIC’ALL SPA’, ‘SPA ALLIANCE’ and ‘PURE SPA’, of which one of the words can be considered to describe in a certain way the element ‘SPA’, for example in ‘ROCK SPA’, ‘Romantik Spa’, ‘TEMPLE SPA’, ‘BUDDHA SPA’, ‘CLINIC’ALL SPA’ and ‘PURE SPA’.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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