OPPOSITION No B 2 435 058

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

Albir Hills Resort, SAU, Verderol 5, 03581 Playa del Albir (Alicante), Spain (applicant), represented by Padima, Calle Gerona 17, 1º A-B, 03001 Alicante, Spain (professional representative).

On 23/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 002435058 is upheld for all the contested goods.

2. European Union trade mark application No 13 145 719  is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 145 719 for the word mark ‘SHA’ for goods in Classes 5, 30 and 32. The opposition is based on Benelux trade mark registration No 389 230 for the word mark ‘SPA’ in Class 32. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division will first examine the opposition in relation to earlier Benelux trade mark registration No 389 230, for which the opponent claimed repute in the Benelux countries for mineral water and aerated waters and other non-alcoholic beverages, syrups and other preparations to make beverages 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 will 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 for 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: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

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

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

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the Benelux countries for the following goods:

Class 32: Mineral water and aerated waters and other non-alcoholic beverages, syrups and other preparations to make beverages in class 32.

Reputation implies a knowledge threshold that 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 05/08/2014. 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.

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. On 29/06/2017 and 30/06/2017 the opponent submitted the following evidence:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

• Copy of an independent survey, namely the ‘Reader’s Digest survey European most trusted brands’ citing ‘SPA’ as the 7^th 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 couronnée meilleure eau d’Europe’ (Belgian newspaper ‘La Dernière Heure – Les Sports’ – 30 January 2009) and English translation. This prize is awarded by CERAM (Centre Européen de Recherche en Eaux Minérales), ‘the European Center for research in mineral waters’. This prize is based on a scientific study based on four criteria: the intrinsic characteristics of the goods, the company’s policy in the field of protection of natural resources, the research and development and the marketing of the goods. This prize was awarded for the first time to ‘SPA’, ‘a Belgian water that has reached a milestone in the history of natural mineral waters and that is today still recognised for its original purity and its constant quality’. A copy is enclosed of the press report from CERAM (Centre Européen de Recherche en Eaux Minérales), dated 29 January 2009 and an extract from the Belgian press article ‘Le Soir’, dated 30 January 2009.

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

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

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

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

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

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

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

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

• Copy of an article dated 30 November 2016 of the Belgian newspaper ‘La Libre Belgique’, titled: ‘Les eaux SPA visent l’Horeca néerlandais’ (The SPA waters target the Dutch horeca) mentioning the market share of Spadel in the Netherlands and in Belgium.

• 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’).

• Copy of the decision rendered by the Court of Appeal of Brussels on 16 September 2016 confirming the judgment of the Court of Commerce of Brussels of 3 February 2011 in the case Spa Monopole/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 (at least part of them) 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 7^th most valuable Belgian trade mark and some extracts from ‘Trends Magazine Top 5000’ showing that the opponent ranks third as regards the breweries and soft drinks sector.

In particular, the sales figures and the global advertising budget featuring the earlier trade mark during the period from 1990 to 2014 (which for reasons of confidentiality and as requested by the opponent cannot be revealed in this decision) are very impressive. Even though the figures are not provided by an independent third party, since they appear in the Declaration signed by Mr Marc du Bois, Managing Director of S.A. Spa Monopole N.V., together with the remaining evidence, they allow the conclusion that the mark ‘SPA’ is widely recognised by the Benelux consumers as a very well-known mark in relation to mineral water and aerated waters in Class 32.

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; Mineral Spa. 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 water and aerated waters.’

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 concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market. In this regard, the Opposition Division does not agree at all with the applicant, in its observations of 19/09/2017, in which it points out that the opponent did not prove enough the consumers’ knowledge about the goods in Class 32 and from the evidence cannot be deduced that the earlier trade mark was known or reputed.

Therefore, taking into account the above and the evidence as a whole, it is concluded that the earlier mark ‘SPA’ obtained a strong reputation in the Benelux countries for mineral water and aerated waters in Class 32.

The contested goods are the following:

Class 5: Dietary and nutritional supplements.

Class 30: Artificial coffee.

Class 32: Juices.

b) The signs

SPA	SHA
Earlier trade mark	Contested sign

The relevant territories consist of the Benelux countries.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark composed of the word ‘SPA’ and the contested sign is a word mark composed of the word ‘SHA’.

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; 25/03/2009, T-21/07, Spaline, EU:T:2009:80; 02/03/2009, R 1231/2005-4 and R 1250/2005-4, WINE SPA, § 36; 03/11/2008, R 219/2005-4, BUBBLE SPA, § 24). 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. The word ‘SPA’ has an inherently normal distinctiveness for the goods in Class 32, but, as explained above, it has become reputed for mineral water and aerated waters.

Regarding the contested sign, the word ‘SHA’ has no meaning for the majority of the public and is distinctive for the goods at stake. According to the applicant, the word ‘SHA’ is perceived as referring to a title carried by the Iranian or Persian sovereigns. However, this word is written as: ‘Shah’ and not as it is written in the contested sign.

Visually, the signs coincide in the first and third letters ‘S-*-A’. However, they differ in the second letter ‘P’ of the earlier mark versus the second letter ‘H’ 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. In the present case, both marks consist of only three letters and the difference will be easily noticed.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters /S-*-A/, present identically in both signs and both marks only consist of one syllable. The marks differ in the second letter ‘P’ of the earlier mark versus ‘H’ in the contested sign. Since the sound of the different letter falls in the middle and is surrounded by the same sounds, the difference cannot so easily be heard. However, for that part of the public that would pronounce the earlier mark as /SPA/ and the contested sign as /SA/, with the letter /H/ being mute, the signs are aurally similar to an average degree and for another part of the public that would pronounce /SPA/ versus /SHA/, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive the meaning of the earlier mark, as explained above, the other sign has no meaning in that territory for the majority of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

The applicant, in its observations, also refers to several previous decisions to support its arguments that the marks are not similar. 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 applicant refers to previous decisions of the Office to support its arguments of no likelihood of confusion, namely B 2 729 252, LUX/LAX, dated 18/07/2017 and B 2 490 350, TSC/TMC, dated 26/01/2016. The previous cases referred to by the applicant are not that relevant to the present proceedings even though the marks are also composed of three letters, since in the present case the earlier mark has obtained a strong reputation, while this is not the case with the cases mentioned by the applicant. In case B 2 729 252, the opponent could not prove that the marks had a higher than a normal degree of distinctiveness and regarding B 2 490 350 its inherent distinctiveness was also normal.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar, at least 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 (Intel, § 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.

As seen above, the signs are visually similar to a low degree, aurally from a low to an average degree (depending on the public) and conceptually they are not similar and the earlier mark ‘SPA’ has, moreover, obtained a high distinctive character due to its strong reputation in relation to mineral water and aerated waters in Class 32.

The contested goods are the following:

Class 5: Dietary and nutritional supplements.

Class 30: Artificial coffee.

Class 32: Juices.

The goods in relation to which the earlier mark has been found to be reputed are the following:

Class 32: Mineral water and aerated waters.

In the view of the Opposition Division, given the coincidences of the marks and the fact that almost the whole earlier mark, with the exception of only one letter, is reproduced in the contested sign, existing of the same amount of letters, and taking into account the visual and aural similarity, the high level of recognition of the earlier mark and the proximity of the relevant economic sectors (explained in detail below), the public will establish a link between the signs in relation to the all the contested goods.

There exists a certain link between the contested goods in Class 5 and the goods in Class 32 for which the earlier mark is reputed. All these goods are for human consumption that can be used for health reasons to create a healthy life style and can even bought in the same kind of outlets. Some of the contested goods could include diet beverages, but all are intended for healthcare, and whose intended purpose could, therefore, be the same as that of mineral water and aerated waters (i.e. healthy drinking). The only difference would be that those in Class 5 are medicated, whereas those in Class 32 are for general consumption, but these goods are also often used in combination, since mineral water is a key element in a diet, for which the dietary supplements can also be used. Furthermore, the ‘SPA’ mineral water has received also medical recognition and is recommended to mothers, babies and children due to its low mineral and salt content and its curative characteristics. It is essential to a healthy diet and has many medical implications. These goods can even be used in the production of the contested goods, are related to mineral waters as they are drinks, they can be used with mineral waters for health treatment and also to prepare food for babies or to complement a baby’s diet (18/04/2011, R 613/2009-2, SPA/mastic Spa (figurative); 14/02/2011, R 573/2010-2, SPA/XO SPA, § 34; 28/10/2010, SPA/TECHNISPA, §6-8; 30/11/2016, R 2477/2015-2, SPA/DOT SPA COSMETICS). As can be seen both from official documents and from advertisements appended to the statement of grounds, ‘SPA’ waters are known in the Benelux countries for their high curative qualities. Since in those countries articles for body and beauty care are offered for sale in pharmacies, it is likely that given the close link between health care products and the renown of the ‘SPA’ water for its medicinal characteristics, the consumer will assume that the applicant’s goods in Class 5 are marketed by, or are under the control of, the opponent.

Furthermore, there exists also a link between the contested goods in Class 30, namely artificial coffee with the opponent’s goods in Class 32 for which the earlier mark is reputed. These goods are in competition, have the same distribution channels, target the same relevant public and may be produced by the same manufacturers. Regarding the remaining contested goods in Class 32, namely juices, these have even a more clearer link with the earlier reputed goods, since they are all non-alcoholic beverages, having a similar nature and purpose of quenching thirst, are in competition, have the same distribution channels, target the same public and they may come from the same undertakings.

Therefore, taking into account and weighing up all the relevant factors of the present case, and in particular the strong reputation of the earlier mark, the similarities between the signs and the close relationship between the conflicting goods, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96). For these reasons, the Opposition Division considers that the relevant consumer will establish a link between the signs for all the contested goods in Classes 5, 30 and 32.

It is important to mention, however, that the applicant argues that SHA is a well-known company that looks for a better quality of life and a specific lifestyle with the basis of a natural and wellness nutrition. The company wants to get this EUTM, especially in Class 32, to be able to sell natural and healthy juices. It also points out that the products will be sold in its centre. However, the comparison of goods and services or a possible link between them must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison or any eventual link, since this comparison or link is part of the assessment of likelihood of confusion or for establishing a link in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

d) 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.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.

Unfair advantage (free-riding)

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

The opponent bases its claim, inter alia, on the following:

The ‘SPA’ trade mark by Spa Monopole has been intensively and exclusively used for mineral waters and non-alcoholic beverages 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 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 ‘SHA’ will be detrimental to the reputation and distinctiveness 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. It is approved by the Ministry of Health as such and recommended by the Royal Academy of Medicine 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 judgments of Mineral Spa, § 43 and of 16/03/2016, T-201/14, SPA WISDOM, EU:T:2016:148, § 60, and also in several decisions of the Boards of Appeal (for example, decision of 16/01/2014, R 1516/2012-4, SPA/SPA WISDOM, § 32; 11/09/2014, R 258/2014-1, SPA/PALAISPA, § 57, 59-60; 06/07/2015, R 2334/2013, SPA/OLIOSPA, § 42; 06/07/2015, R 814/2014-4, SPA/Dr. Spafish (figurative), § 36; 30/11/2016, R 2477/2015-2, SPA/DOT SPA COSMETICS). The use of the contested sign ‘SHA’ 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 ‘SHA’ 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.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(Intel, § 36.)

To determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment, which takes into account all the factors relevant to the circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 53, confirmed, on appeal, by 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; see also Adidas, § 29, 30, 38; Intel, § 57, 58, 66; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

The applicant’s intention is not a material factor. Taking unfair advantage of the distinctiveness or the repute of a trade mark may be a deliberate decision, for example, where there is clear exploitation and free-riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics that it projects are transferred to the goods and services covered by the mark applied for, with the result that the marketing of those goods and services is made easier by that association with the earlier mark with a reputation’ (Mineral Spa, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

In the present case, the earlier mark has obtained a strong reputation among the relevant public in relation to mineral water and aerated waters in Class 32. It has become an attractive and powerful brand in the Benelux market. As can be seen in the evidence provided by the opponent, the mark ‘SPA’ 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.

Taking into account the strong reputation of the earlier mark, the similarities between the marks and the fact that the conflicting goods belong to connected markets, it is concluded that the relevant public will make a connection between the marks, an association that will produce a commercial benefit for the applicant. There is a high probability that the use of the mark applied for may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the earlier mark and the considerable investments undertaken by the opponent to achieve that reputation. The contested sign could take unfair advantage of the image of the earlier trade mark and the message conveyed by it, that is, that its goods have identical characteristics to those of the opponent, namely that they are ‘healthy, beautiful, pure, rich in minerals and with curative characteristics’. The use of the trade mark applied for could also lead to the perception that the applicant is associated with or belongs to the opponent and, therefore, could facilitate the marketing of the goods for which registration is sought.

Other types of injury

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

e) Final conclusion

Considering all the above, the opposition is well founded under Article 8(5) ETMR for all the contested goods. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground on which the opposition was based.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard BIANCHI

Chantal VAN RIEL

María del Carmen SUCH SÁNCHEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.