OPPOSITION No B 2 355 686

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

Michael Merzhäuser, Am Weingarten 7, 35415 Pohlheim, Germany (applicant).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 355 686 is partially upheld, namely for the following contested goods:

Class 3: Toiletries; cleaning and fragrancing preparations; animal grooming preparations; essential oils and aromatic extracts.

Class 5: Dietary supplements and dietetic preparations; hygiene preparations and articles; medical and veterinary preparations and articles; dental preparations and articles.

2.        European Union trade mark application No 12 549 762 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 549 762. The opposition is based on Benelux trade mark registration No 372 307, in relation to which the opponent only invoked Article 8(1)(b) EUTMR, and on Benelux trade mark registration No 389 230, in relation to which the opponent only invoked Article 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 based on the ground of Article 8(1)(b) EUTMR.

1. The goods and services

The goods on which the opposition is based are, after a limitation by the opponent on 26/09/2016, the following:

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

The contested goods and services are the following:

Class 3: Toiletries; cleaning and fragrancing preparations; animal grooming preparations; essential oils and aromatic extracts.

Class 5: Dietary supplements and dietetic preparations; hygiene preparations and articles; medical and veterinary preparations and articles; dental preparations and articles.

Class 44: Animal healthcare services; human healthcare services; human hygiene and beauty care; animal grooming services.

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

Contested goods in Class 3

The contested toiletries include, as a broader category, the opponent’s dentifrices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cleaning preparations; animal grooming preparations include, as broader categories, the opponent’s soaps. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested essential oils are identically contained in both lists of goods.

The contested fragrancing preparations; aromatic extracts are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

Contested goods in Class 5

The contested medical and veterinary preparations and articles; dental preparations and articles are similar to the opponent’s dentifrices in Class 3. These goods have the same purpose, distribution channels, relevant public and they may be manufactured by the same kinds of undertakings.

The contested hygiene preparations and articles are similar to the opponent’s soaps in Class 3. These goods have the same purpose, distribution channels, they target the same public and can have the same origin.

When comparing the contested dietary supplements and dietetic preparations, which are substances prepared for special dietary requirements with the purpose of treating or preventing disease, with the opponent’s goods in Class 3, which mainly include toilet preparations, they are considered dissimilar. These contested goods have a different nature and purpose. They are not in competition nor complementary, they target a different public and they are normally not manufactured by the same kinds of undertakings. 

 

Contested services in Class 44

Although the services in question are not identical, 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 services listed above in Class 44. The examination of the opposition will proceed as if all the contested services in this class were highly similar to the goods 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 contested goods in Classes 3 and 5 which are identical or similar and the contested services in Class 44, which are assumed to be highly similar, are directed at the public at large, for example cleaning preparations in Class 3, and some are more specialised goods and services directed at both average consumers and business customers with specific professional knowledge or expertise in the medical and healthcare field (26/04/2007, C-412/05 P, ‘TRAVATAN’), for example medical articles in Class 5. 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 that kind of beauty treatments that are more intense, such as filler treatments. In these cases the level of attention will be above average. Moreover, some of the contested goods, hygiene preparations, for example, but also the broad category of the applicant’s medical preparations can include preparations that are relatively cheap and are sold directly to the consumer without prescription, as well as highly 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.

3. The signs

SPA
Earlier trade mark	Contested sign

The relevant territory is 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. The contested sign is a figurative mark composed of the words ‘YOGI’ and ‘SPA, written in a fairly standard typeface in capital letters being the word ‘YOGI’ in bold. On top of the sign appears a figurative element in the form of a black circle with some flowers inside in white.

The earlier mark and the contested sign have no element(s) that can be considered clearly more dominant than 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 (see judgment of 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, in its observations of 26/09/2016, 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, 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 be 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 from this cannot be inferred that the word is descriptive or generic with respect to cosmetic products. In sum, the sole element ‘SPA’ has a normal degree of distinctiveness in relation to the goods in Class 3.

The word ‘SPA’ in the contested sign is perceived as having the same meaning as in the earlier mark. This element is normally distinctive for the contested goods in Classes 3 and 5, but it 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 ‘YOGI’ is a meaningless term for part of the relevant public. The figurative element with some flowers inside could be perceived as referring to the smell of flowers. Therefore, this element could be considered weak for the goods in Class 3 that have this smell, such as fragrancing preparations. This element may refer to the ingredients of the cosmetics or the sensation that it creates. Furthermore, it is not uncommon for the services in Class 44 to use such a device. Consequently, the most distinctive elements for the goods in Classes 3 and 5 are both the words ‘YOGI’ and ‘SPA’, but for the contested services in Class 44 the most distinctive element is the word ‘YOGI’ in the contested sign.

Visually, the signs coincide in the word ‘SPA’, meaning that the whole earlier mark is included in the contested sign. This element is, however, non-distinctive for the services in the contested sign and a distinctive element for the remaining goods. The marks differ in the additional word ‘YOGI’ and in the figurative element of the contested sign, the latter being a weak element.

Regarding the figurative element in the contested sign, 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). This is even more applicable in the case at hand, since this element has also a weak character, as pointed out above.

Regarding the fairly standard typeface in which the contested sign is written, this stylisation must be considered not that overwhelming and it will not lead the consumer’s attention away from the words it seems to embellish.

Therefore, the signs are visually similar to an average 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 both signs. The pronunciation differs in the sound of the word /YO-GI/, which has no counterpart in the earlier mark. 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 an average degree. However, although the coinciding word ‘SPA’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive, for the services in Class 44, and cannot indicate the commercial origin of any of the marks for these services. The attention of the relevant public will be attracted by the additional fanciful verbal element ‘YOGI’, which has no meaning.

As the signs have been found similar 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. In the present case, the earlier trade mark as a whole has no meaning for any of the relevant 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.

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 in Classes 3 and 5 have been found to be identical or similar and the contested services in Class 44 have been assumed to be highly similar. The level of attention varies from average to above average. The earlier mark has a normal degree of distinctiveness for the goods in Class 3.

The figurative element of the contested sign is considered not only to be weak, but in combined marks with words and devices, the public would focus anyway more on the word elements. Furthermore, the term ‘SPA’ in the contested sign plays a distinctive autonomous role within it, since it is separated from the remaining element ‘YOGI’, because of its thinner typeface and the space between the words.

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).

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 goods in Classes 3 and 5 covered by the marks come from the same undertaking or economically-linked undertakings. Taking into account all the circumstances, the differences between the signs are not enough 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 elements ‘YOGI’ and the circle with flowers 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 and medical products, for example, it is not unusual that manufacturers frequently put several lines of products on the market under different sub-brands.

Nonetheless, as stated above, 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, or even of animals, are offered. Nowadays, it is not unusual that there exist saunas, spas and this kind of places for animal grooming services as well. Hence, the presence of these coinciding words does not impinge upon the way the signs are perceived. The coincidence in this non-distinctive element cannot result in likelihood of confusion for a part of the goods and services, namely those 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 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 similarity between the signs, this will not cause consumers to confuse them. Even considering the assumed high similarity of the services in Class 44 with the opponent’s goods in Class 3, there will be no likelihood of confusion.

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 registration No 372 307.

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 those of the earlier trade mark.

Some of the contested goods are dissimilar, namely dietary supplements and dietetic preparations in Class 5. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is not fully successful on the basis of the ground of Article 8(1)(b) EUTMR, the Opposition Division will further examine the other ground of the opposition, namely Article 8(5) EUTMR regarding Benelux trade mark registration No 389 230 for the word mark ‘SPA’ for the remaining goods and services, namely dietary supplements and dietetic preparations in Class 5 and the contested services in Class 44.

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 waters 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 grounds of Article 8(1)(b) EUTMR and this mark is identical (word mark ‘SPA’) to the one which has already been examined. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the Benelux countries.

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.

In the present case the contested trade mark was filed on 30/01/2014. 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 that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 32:        Mineral and aerated waters.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent submitted evidence on 21/09/2016, 22/09/2016 and 26/09/2016 to support this claim. 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 evidence consists, in particular, of the following documents:

• 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, together with an English translation of extracts of this French publication.

• 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 2010.

• 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 reach 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 and 2010 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).

• 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’).

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.

In particular, the sales figures and the global advertising budget featuring the earlier trade mark during the period from 1990 to 2010 (which for reasons of confidentiality 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.

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 and aerated waters 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’ enjoys a reputation in the Benelux for mineral and aerated waters and will examine the remaining requirements for Article 8(5) EUTMR based on these goods.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to an average 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).

It is now apparent that the earlier mark has a reputation in the Benelux countries for mineral and aerated waters 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 and services: dietary supplements and dietetic preparations in Class 5 and animal healthcare services; human healthcare services; human hygiene and beauty care; animal grooming services in Class 44.

The Opposition Division will first examine in the following headings whether or not there exists a link with respect to the goods in Class 5 and the services in Class 44.

Goods in Class 5

In the present case, the signs are found to be visually, aurally and conceptually similar to an average degree, as pointed out already above. Although the word ‘SPA’ is also accompanied by the word ‘YOGI’ and a figurative element in the contested sign, the Opposition Division is of the opinion that the inclusion of this word in the application contributes to the finding of a link between the marks at issue.

Furthermore, there exists also a certain link between the dietary supplements and dietetic preparations in Class 5 and the earlier goods in Class 32. All these goods are for human consumption that can be used for health reasons to create a healthy life style and could even be bought in the same kind of outlets. It is important to point out that ‘SPA’ has also perceived medical recognition. Dietary supplements and dietetic preparations are concentrated sources of nutrients with a nutritional or physiological effect. These goods can also be sold in the form of beverages and not only food and are in a certain way intended for healthcare or for a healthier life. Furthermore, the goods show some points of contact, since mineral waters and their mineral salts can be used for the production of, for example, vitamins, homeopathic preparations and also for the above mentioned goods. These goods are often consumed together as they are sometimes dissolved in water and a lot of drinks that come on the market have added specific vitamins, for the specific purpose of either energizing, beautification or improving health and the better functioning of the human body. 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 life and has many medical implications.

Therefore, the contested sign, ‘YOGI SPA (FIGURATIVE)’, is considered to trigger a link with the reputed earlier mark, ‘SPA’, in the mind of the relevant public for some of the applicant’s goods, namely dietary supplements and dietetic preparations in Class 5.

Therefore, as far as these goods are concerned, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier mark, 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).

The Opposition Division has, however, come to a different conclusion as regards the remaining contested services in Class 44, as will be shown underneath.

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 ‘YOGI SPA (FIGURATIVE)’ for animal healthcare services; human healthcare services; human hygiene and beauty care; animal grooming services in Class 44 and the earlier mark ‘SPA’ with a reputation for mineral and aerated waters in Class 32.

It is true that the signs under comparison are 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. 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. It is also not unusual nowadays that animal grooming services and healthcare services are provided in ‘spa-resorts’, saunas, wellness centres and the like and one could think of for example physical therapy. As such, the term ‘SPA’ is non-distinctive for the services.

As previously set out, the term ‘SPA’ in relation to the contested animal healthcare services; human healthcare services; human hygiene and beauty care; animal grooming 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 with respect to animals. 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 (both for humans as well as for animals) 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 trade mark 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 abovementioned contested services, there is no reason to suppose that the same consumer, when encountering the contested sign ‘YOGI SPA (FIGURATIVE)’, would make any mental link with the ‘SPA’ mark which is reputed for mineral and aerated waters 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. This large gap between them makes it unlikely that the contested sign would remind the relevant consumer of the earlier mark.

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, the lengths of the marks at hand and the different beginnings, 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 proved. The Opposition Division does not agree with the opponent, where it points out that there is a link between the marks. “The trade mark ‘SPA’ is entirely included in the contested sign 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’ has a very limited distinctiveness 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 goods and services in dispute and the goods for which reputation is proved, 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’ designating mineral waters 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 be rejected for the contested services in Class 44: animal healthcare services; human healthcare services; human hygiene and beauty care; animal grooming services. 

4. 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 prominently 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 ‘YOGI 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 ‘YOGI 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 ‘YOGI 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 the goods.

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.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods for which a link has been established:

Class 5: Dietary supplements and dietetic preparations.

As seen above, the earlier trade mark was found to have a reputation for:

Class 32: Mineral and aerated waters.        

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 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

As claimed by the opponent, the use of the contested mark ‘YOGI 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 ‘YOGI’ and a figurative element in the form of a circle with some flowers, the latter is a weaker component in the contested sign, as explained above; the addition of the word ‘YOGI’ 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 and finally, the contested sign also includes the figurative element with some flowers, which is exactly one of the images that the opponent creates with its reputed earlier mark, namely that of freshness, cleanliness, purity.

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 (C-252/07, ‘Intel’, § 67-69; and 18/06/2009, C-487/07, ‘L’Oréal’, § 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 c). 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.

As seen above, encroachment upon reputation is an essential condition for the applicability of Article 8(5) EUTMR, which may take three different forms. For an opposition to be well founded, in this respect, it is sufficient that only one of these forms is found to take place. 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 not the other forms also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

Class 5: Dietary supplements and dietetic preparations.

The opposition is not successful under this ground insofar as the remaining services are concerned, namely animal healthcare services; human healthcare services; human hygiene and beauty care; animal grooming services in Class 44. 

The opponent, in its observations of 26/09/2016, also refers to previous decisions of the Office to support its arguments. However, it must be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous decisions the opponent refers to are the following: ‘SPA’ versus ‘100% SPA No Beauty without Truth’ (B 2 146 408); ‘SPA’ versus ‘THE LUX SPA (FIGURATIVE)’ (B 2 289 281); ‘SPA’ versus ‘pjur love spa’ (B 2 240 326) and ‘SPA’ versus (B 2 095 712). These previous cases are not that relevant to the present proceedings for the following reasons: The contested goods are only those in Classes 3 and 5, for which the EUTMR is also rejected in the present case.

Furthermore, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, such as ‘SPA’ versus ‘MELT SPA BAR’ (B 1 155 722); ‘SPA’ versus ‘’ (B 1 462 821); ‘SPA’ versus ‘CLINIC’ALL SPA’ (B 1 725 202); ‘SPA’ versus ‘SPA ALLIANCE’ (B 1 606 386) and ‘SPA’ versus ‘’ (B 2 347 451), since the contested services also included 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.

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 and services, 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

Richard BIANCHI

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.