OPPOSITION No B 2 026 600

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

Sławomir Woś, ul. Powstańców Warszawy 69, 83 000 Pruszcz Gdański, Poland (applicant), represented by Jarzynka i Wspólnicy Kancelaria Prawno-Patentowa, ul. Słomińskiego 19/522, 00-195 Warszawa, Poland (professional representative).

On 07/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 026 600 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 10 572 584, namely against all the goods in Classes 3 and 8. The opposition is based, after a limitation on 12/02/2016, on the following earlier marks: Benelux trade mark registration No 372 307, in relation to which the opponent invoked Article 8(1)(b) EUTMR, and Benelux trade mark registration No 389 230, in relation to which the opponent invoked Articles 8(1)(b) and 8(5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 372 307.

 

1. The goods

The goods on which the opposition is based are, after a limitation by the opponent on 12/02/2016, the following:

Class 3:         Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

The contested goods are the following:

Class 3:         Foot and hand care preparations; nail varnishes and polishes.

Class 8:         Utensils and sets for foot and hand care.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. 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 assumed to be identical are directed at both the public at large, for example nail varnishes and soaps in Class 3, and at a more professional public in the manicure and pedicure fields, for example utensils and sets for foot and hand care in Class 8. Some of the goods, especially those that are bought by manicure and pedicure salons, adopt a decidedly more demanding approach due to the features of the goods in question, their price and conditions of the goods and, consequently, consumers may pay special attention when purchasing them. Therefore, the level of attention varies from average to above average.

3. The signs

SPA
Earlier trade mark	Contested sign

The relevant territory comprises 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 consisting of the word ‘SPA’. In case of word marks the words themselves are protected, not their written form. Therefore, it is irrelevant whether word marks are represented in lower or upper case or a combination of those letters.

The contested sign is a figurative mark consisting of the words ‘Olive Tree’, written in a slightly fancy typeface in title case, at the bottom part of the sign. Underneath, in a much smaller typeface, appear the words ‘Spa Clinic’, also written in a slightly fancy typeface in title case. In the middle appears a horizontal line and on top a figurative element in the form of an olive tree. All these elements are placed inside of a rectangular frame with round corners.  

The words ‘Olive Tree’, together with the figurative element in the form of an olive tree, are the most dominant (visually eye-catching) elements of the contested sign, due to their size and position in the mark when compared to the remaining words ‘Spa Clinic’, as they are depicted in a much smaller typeface.

The earlier mark ‘SPA’ refers to the name of a Belgian town famous for its mineral and thermal sources, the Belgian racing circuit of Spa-Francorchamps and may also denote a reference to hydrotherapy such as hammams or saunas and is a generic term for health and wellness centres providing treatment services for the body based on hydrotherapy (12/11/2009, T-438/07, SpagO, EU:T:2009:434, § 28; 19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 31; 25/05/2005, T-67/04, Spa-Finders, 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; decision of 04/01/2016, R 0436/2016-4, THE BODY SHOP SPA OF THE WORLD), 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 the earlier mark has a normal degree of distinctiveness in relation to the goods in Class 3.

However, regarding the contested sign, the same is not applicable as what has been said before. The word ‘Spa’ is followed by the word ‘Clinic’, which is ‘a building where people go to receive medical advice or treatment’ (see Collins English Dictionary online). Even though this is an English word, it is very similar to the equivalent word in the languages spoken in the Benelux countries, such as ‘clinique’ (in French), ‘Klinik’ (in German) and ‘kliniek’ (in Dutch). The relevant public will perceive the words ‘Spa Clinic’ as a place where, apart from medical treatments or as a part from the medical treatment, also wellness, spas and saunas are available, or the medical treatment consists of ‘spa’ treatment. The consumer could think that the relevant goods are sold in a ‘Spa Clinic’ or that they are used at that place. Consequently, these elements together are less distinctive than the remaining elements of the contested sign.

The words ‘Olive Tree’, together with the figurative element of an olive tree, in the contested sign is not descriptive, allusive or otherwise weak with respect to the relevant goods and is normally distinctive, even though the opponent, in its observations, points out that the figurative element of an olive tree is not particularly imaginative when used in relation with cosmetic-related goods.

Visually, the signs coincide in the word ‘SPA’. However, regarding this word they differ in position; the earlier mark consists only of this word, while in the contested sign it is placed under the figurative element and the words ‘Olive Tree’, which are not only clearly the most dominant elements, but also the most distinctive ones, together with the figurative element of an olive tree, since the public would perceive the words ‘Spa Clinic’ on the bottom as being weak. Furthermore, the marks differ in the remaining words of the contested sign, ‘Olive’, ‘Tree’ and ‘Clinic’, the figurative element in the form of an olive tree, the latter also one of the co-dominant and most distinctive elements, in the horizontal line and the rectangular frame with round corners. Even though it is true that normally a consumer pays more attention to the verbal elements than to the figurative ones, the device of the olive tree in the uppermost part of the contested sign and placed inside of a frame, is quite eye-catching in size and position and can certainly not be overlooked. This contrary to the opponent’s argument that this figurative element is of less importance in the overall impression. Moreover, the earlier mark is a word mark, merely consisting of one word, while the contested sign is a figurative one, being a much more complex sign.

It is also important to mention that the first parts of the verbal elements of the conflicting marks do not coincide; the word ‘SPA’ versus the words ‘Olive Tree’. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64 and 65). The words ‘Olive Tree’ are distinctive and by far one of the most eye-catching elements of the contested sign.

The length of the signs may influence the effect 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 is, therefore, a very short mark versus four words with a total of eighteen letters in the contested sign and some figurative elements. The marks only have three letters in common.

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 word /SPA/, present identically in both signs. These elements are pronounced in a different position, in the contested sign after the words ‘Olive Tree’. The pronunciation differs in the sound of the additional words ‘Olive’, ‘Tree’ and ‘Clinic’. The words ‘Spa Clinic’ are, however, weak elements, placed at the bottom, and they play also a secondary role in the sign. The sound of the words ‘Olive’, ‘Tree’ and ‘Clinic’ is not shared at all by the earlier mark. If all the words of the contested sign are pronounced, the signs are aurally similar to a low degree. However, since the words ‘Olive Tree’ are so dominant in the contested sign, the Opposition Division finds that it is more likely that these smaller words, also due to their weak character, are not at all pronounced. For this part of the public, the marks do not aurally coincide in any element and 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 signs will be associated with a similar meaning to the extent that they both contain the word ‘SPA’, the signs are conceptually similar to a low degree. However, although the coinciding word ‘SPA’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element, together with the  word ‘Clinic’ is weak in the contested sign and cannot indicate its commercial origin. Furthermore, this element is also less dominant. The expression ‘Spa Clinic’, as explained above, is understood by the public as just indicating a place/clinic where medical advice, treatment and spa services may be offered and the consumer could think that the relevant goods are sold in a ‘Spa Clinic’ or that they are used at that place. The attention of the relevant public will, therefore, be attracted by the additional distinctive verbal elements, having the meaning as stated above and its meaning being reinforced by the figurative element in the form of an olive tree. Due to the combination of all the elements of the contested sign, it gives the impression that the mark ‘Olive Tree’ is responsible for the goods being offered and sold during the treatments offered by the ‘Spa Clinic’. All these differentiating elements and meanings give the contested sign some additional concepts that are not at all shared by the earlier mark. It follows that, as both signs contain the word ‘SPA’, they convey a similar concept (that of SPA, either a city in Belgium, or a reference to hydrotherapy) and the marks are conceptually 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.

4. 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 its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

The earlier 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 this earlier mark must be seen as normal.

5. 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 are assumed to be identical and the level of attention of the public varies from average to above average. The earlier mark has a normal degree of distinctiveness.

The signs have been found to be visually similar to a low degree, aurally to a low degree or not aurally similar, and conceptually also to a low degree.

In the present case, the Opposition Division is of the opinion that the low visual, phonetic and conceptual similarity between the signs is not enough to lead, in any case, to a likelihood of confusion. Although both signs coincide in the word ‘SPA’, the marks still contain significant visual, aural and conceptual differences, as has been explained in detail above.

The marks, taken as a whole, show overall more differences than similarities, in particular at their beginnings, which is an important position, and also taking into consideration the short earlier mark. Therefore, the minor visual, phonetic and conceptual similarities are not strong enough to induce the public to believe that the goods that are sold under the signs come from the same or from economically-linked companies.

Considering all of the above, and even assuming that the goods are identical, the Opposition Division finds that there is no likelihood of confusion on the part of the public, including a likelihood of association, even taking into account that part of the public pays an average degree of attention and this part is normally more vulnerable to confusion. Therefore, the opposition must be rejected as far as based on Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the following earlier trade mark:

• Benelux trade mark registration No 389 230 for the word mark ‘SPA’ for goods in Class 32.

Since this mark is identical to the one which has been compared, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods, irrespective of the goods for which it is even registered.

The opponent points out, in its observations of 12/02/2016, that from an aural and visual point of view, the contested sign is similar to the earlier mark, as the sign includes the earlier trade mark ‘SPA’ which keeps its independent role. It refers to a decision taken by the Opposition Division on 01/02/2000 in opposition No B 94 997, ‘PEPE’/’PEPE CABALLERO’. However, the Opposition Division does not find this case comparable to the present case, since the whole earlier mark ‘PEPE’ is included as the first element in the contested sign, which only consists of two word elements. In this case, as described thoroughly above, the contested sign is a much more complex mark and the element ‘SPA’ only coincides in three letters, has a less dominant position in the sign, is placed in different positions, etc.

The opponent also makes mention of several other decisions taken by the Opposition Division to support its arguments of likelihood of confusion, such as No B 1 725 202, ‘SPA’/’CLINIC’ALL SPA’; No B 1 875 189, ‘SPA’/’MANDARA SPA’ (FIGURATIVE); B 2 095 712, 30/10/2013, ‘SPA’/ ; B 2 146 408, 13/02/2014, ‘SPA’/’100% SPA No Beauty without Truth’; B 2 240 326, 19/12/2015, ‘SPA’/’pjur love spa’; B 2 289 281, 27/08/2014, ‘SPA’/’THE LUX SPA’ (FIGURATIVE) and B 2 344 417, 17/03/2016, ‘SPA’/’PURE SPA’ (FIGURATIVE). Regarding B 1 725 202, both marks are word marks and the contested sign only consists of two elements, entirely including the whole earlier mark. Regarding B 1 875 189, the contested sign only consists of two elements, entirely including the whole earlier mark, and the verbal elements and the figurative one in the contested sign are equally dominant. Regarding B 2 095 712, the earlier mark is entirely included in the contested sign of which the most dominant verbal elements are ‘NORDIC SPA’, only consisting of two words. With respect to B 2 146 408, the earlier mark ‘SPA’ is entirely included as the most distinctive element in the contested sign, as ‘100%’ is perceived as ‘genuine’ and the slogan ‘No Beauty without Truth’ emphasises the genuineness of ‘SPA’ and its effectiveness in beauty treatments. With respect to B 2 240 326, B 2 289 281 and B 2 344 417, the earlier mark is entirely included in one of the most distinctive elements of the contested sign. For all the aforementioned reasons, the Opposition Divisions finds that these decisions are not comparable with the case at hand.

Furthermore, even though the previous decisions submitted to the Opposition Division were to some extent factually similar to the present case, 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.

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.

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.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims reputation in the Benelux countries for the earlier Benelux trade mark registration No 389 230 for ‘SPA’ for goods 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.

• 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 abovementioned 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.

1. 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.

2. Reputation of the earlier trade mark

The opponent filed a considerable amount of evidence in order to prove the reputation of the earlier mark. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim will continue on the assumption that the earlier mark has a reputation in the territory claimed, the Benelux countries, in connection with the goods in Class 32, namely mineral and aerated waters.

3. The ‘link’ between the signs

As seen above, the earlier mark is assumed to have a reputation for the above mentioned goods in Class 32 and the signs are similar to some extent.

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 Opposition Division is of the opinion that the link between the elements ‘SPA’ (word mark) and ‘Olive Tree Spa Clinic’ (FIGURATIVE) is too vague and that there are differences between the opponent’s mark and the contested sign, explained thoroughly above and resumed below, that make it unlikely that the opponent’s mark would come to consumers’ minds when they see the contested sign, thus making the products labelled with the contested sign more attractive to consumers.

For the Benelux public, the word ‘SPA’ in the earlier mark, as explained above, will be understood as having several of the aforementioned meanings. However, as the word ‘Spa’ in the contested sign is followed by the word ‘Clinic’, here it refers, conceptually, only to a place/clinic where hydrotherapy, hammams or saunas are also available. It is also important to mention that the contested sign is composed of, inter alia, the words ‘Olive Tree’ that, as such, are understood and even more as the meaning of these elements is reinforced by the figurative element in the form of an olive tree, whereas the earlier mark is clearly understood as having the aforementioned meanings.

Furthermore, even though the word ‘SPA’ is repeated in the contested sign, it has a secondary role, as this sign is clearly dominated by the words ‘Olive Tree’ and the device. The remaining verbal and figurative elements of the contested sign, namely the words ‘Olive’, ‘Tree’ and ‘Clinic’ and the figurative element of an olive tree have no counterparts at all in the earlier mark and the figurative element of an olive tree of the contested sign is also distinctive in relation to the relevant goods. Even though some of the elements, namely the word ‘Clinic’ is less dominant in the contested sign, and the word is not very distinctive either, which is also applicable to the figurative element in the form of a rectangular frame with round corners that is merely of a decorative nature, these elements together can certainly not be overlooked. 

Phonetically, even though one syllable in the marks is identical, namely the word /SPA/, being not a particularly long word consisting of only three letters, the contested sign has many more syllables. It is even important to mention that, due to the clearly dominant words ‘Olive Tree, the words underneath are probably not pronounced and in this case the marks are even aurally not similar. The marks have also different beginnings. The fact is that the marks in question are only remotely similar in appearance for all the above reasons.

The relevant consumers, when encountering the contested sign ‘Olive Tree Spa Clinic’ (FIGURATIVE) for goods in Classes 3 and 8, would not make any mental link with the ‘SPA’ mark which is assumed to be reputed for goods in Class 32.

The opponent is of the opinion that in view of the high reputation of the word mark ‘SPA’ designating goods in Class 32, the link will in casu be even more important for the goods in Classes 3 and 8, since these goods have a certain link, as, for example, for the cosmetic products the mineral water might be included. 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, inter alia, the goods in Class 3, does not mean that for the relevant public the opponent’s mark would come to mind when confronted with the contested goods. In this regard, the Opposition Division rather agrees with the applicant, in its observations of 06/05/2016, where it points out that the scope of activities of the applicant do not have any link with those of the opponent. Consumers, in the case of the goods of the ‘SPA’ marks will look for all kinds of drinks, fruit juices, soft drinks and syrups to produce them, while the recipients of the goods marked ‘Olive Tree Spa Clinic’ (FIGURATIVE) will be oriented primarily on beauty treatments and cosmetics. Accordingly, there is no possibility that the average consumer would confuse so different market activities.

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, aural and conceptual levels, the coincidence in a weak element (in the contested sign) and the differences in usage and provision between the goods 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.

Therefore, 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, that is to say establish a ‘link’ between them. Therefore, the opposition is not well-founded under Article 8(5) EUTMR and must be rejected for the contested goods in Classes 3 and 8. Likewise it is not necessary to examine the evidence of reputation and that one of proof of use. Even assuming that the earlier mark has a substantial reputation for the goods in Class 32, no link will be made. 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.

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.