OPPOSITION No B 2 549 072

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

Slovenské Liečebné Kúpele Piešťany, A.S., Winterova 29, 92129 Piešťany, Slovakia (applicant), represented by Holoubkova Patent and Trademark Agency, Krcmeryho 14, 811 04 Bratislava, Slovakia (professional representative).

On 30/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 549 072 is upheld for all the contested goods, namely

Class 3: Cosmetic bath preparations containing active mud prepared from non-active loess (peloids); toiletries containing active mud prepared from non-active loess (peloids); medicated soap, oils for cosmetic and toilet purposes; toiletries containing extracts of active mud; toilet water; lotions for skin.

Class 5: Medicated active mud, prepared from non-active loess (peloids); mud for wraps and for the bath; mud (medicinal -); medicated mud bath preparations; oxygen baths; therapeutic mud bath preparations; mud wraps; hot mud wraps; pharmaceutical skin preparations containing mud; mud as a healthcare aid used in vivo for the treatment of musculoskeletal disorders, rheumatic disorders, osteoporosis and skin disorders; chemical preparations for pharmaceutical and medical purposes; wipes for medical use; salts for medical purposes; pharmaceutical preparations; medicated bath additives; bath (therapeutic preparations for the -); oxygen baths; medicated bath salts; salts for mineral water baths; medicines for human purposes; medicinal drinks; ointments for pharmaceutical and medical purposes; mineral waters for medical purposes; adhesive bands for medical purposes; wraps of natural or chemical substances for hygienic, medical or bath purposes; sanitary wear; burns (preparations for the treatment of —); anti-rheumatism bracelets; mineral water salts; mineral salts; thermal water; mineral water for medical purposes.

2. European Union trade mark application No 13 196 407 is rejected for all the contested goods. It may proceed for the remaining non-contested goods and services.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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 should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against part of the goods and services of European Union trade mark application No 13 196 407 for the figurative mark , which are now, after a limitation of the extent by the opponent on 14/12/2017, only the goods in Classes 3 and 5. The opposition is now based, also after the limitation by the opponent of its earlier marks, on Benelux trade mark registration No 372 307 for the word mark ‘SPA’, in relation to which the opponent only invoked Article 8(1)(b) EUTMR, and on Benelux trade mark registration No 389 230 for the word mark ‘SPA’, in relation to which the opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

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.

1. The goods

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

Benelux trade mark registration No 372 307

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

Benelux trade mark registration No 389 230

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

The contested goods are the following:

Class 3: Cosmetic bath preparations containing active mud prepared from non-active loess (peloids); toiletries containing active mud prepared from non-active loess (peloids); medicated soap, oils for cosmetic and toilet purposes; toiletries containing extracts of active mud; toilet water; lotions for skin.

Class 5: Medicated active mud, prepared from non-active loess (peloids); mud for wraps and for the bath; mud (medicinal -); medicated mud bath preparations; oxygen baths; therapeutic mud bath preparations; mud wraps; hot mud wraps; pharmaceutical skin preparations containing mud; mud as a healthcare aid used in vivo for the treatment of musculoskeletal disorders, rheumatic disorders, osteoporosis and skin disorders; chemical preparations for pharmaceutical and medical purposes; wipes for medical use; salts for medical purposes; pharmaceutical preparations; medicated bath additives; bath (therapeutic preparations for the -); oxygen baths; medicated bath salts; salts for mineral water baths; medicines for human purposes; medicinal drinks; ointments for pharmaceutical and medical purposes; mineralwaters for medical purposes; adhesive bands for medical purposes; wraps of natural or chemical substances for hygienic, medical or bath purposes; sanitary wear; burns (preparations for the treatment of —); anti-rheumatism bracelets; mineral water salts; mineral salts; thermal water; mineral water for medical purposes.

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

Contested goods in Class 3

The contested cosmetic bath preparations containing active mud prepared from non-active loess (peloids); toiletries containing activemud prepared from non-active loess (peloids); oils for cosmetic and toilet purposes; toiletries containing extracts of active mud; lotions for skin mud prepared from non-active loess (peloids); oils for cosmetic and toilet purposes; toiletries containing extracts of active mud; lotions for skin are included in the broad category of the opponent’s cosmetics (BX No 372 307). Therefore, they are identical.

The contested medicated soap is included in the broad category of the opponent’s soaps (BX No 372 307). Therefore, they are identical.

The contested toilet water is included in the broad category of the opponent’s perfumery (BX No 372 307). Therefore, they are identical.

toilet water is included in the broad category of the opponent’s perfumery (BEN No 372 307). Therefore, they are identical.

Contested goods in Class 5

The contested salts for mineral water baths; mineral water salts; mineral salts are highly similar to the opponent’s cosmetics (BX No 372 307). They may coincide in purpose, distribution channels, target the same public and they are often manufactured by the same companies.

The contested medicated active mud, prepared from non-active loess (peloids); mud (medicinal -); medicated mud bath preparations; pharmaceutical skin preparations containing mud; mud as a healthcare aid used in vivo for the treatment of musculoskeletal disorders, rheumatic disorders, osteoporosis and skin disorders; chemical preparations for pharmaceutical and medical purposes; wipes for medical use; salts for medical purposes; pharmaceutical preparations; medicated bath additives; medicated bath salts; medicines for human purposes; medicinal drinks; ointments for pharmaceutical and medical purposes; adhesive bands for medical purposes; wraps of natural or chemical substances for medical purposes; burns (preparations for the treatment of —); anti-rheumatism bracelets ated mud bath preparations; oxygen baths; mud wraps; hot mud wraps; salts for medical purposes; pharmaceutical preparations; medicated bath additives; oxygen baths; medicated bath salts; medicines for human purposes; medicinal drinks; ointments for pharmaceutical and medical purposes; adhesive bands for medical purposes; wraps of natural or chemical substances for medical purposes; burns (preparations for the treatment of —); anti-rheumatism bracelets are similar to the opponent’s cosmetics (BX No 372 307). Cosmetics, on one hand, include a list of care preparations intended to be applied to the human body for cleansing, beautifying, promoting attractiveness, altering the appearance or giving it a pleasant smell or odour, without affecting the body’s structure or functions. Pharmaceuticals and also all kinds of preparations with a medical purpose, on the other hand, comprise products, such as skin or hair care preparations, with medical properties. They may coincide in purpose with cosmetics. Moreover, they share the same distribution channels, since they can be found in pharmacies, drugstores or other specialised shops. They are directed at the same public and are often manufactured by the same companies.

The contested mineral waters for medical purposes; thermal water; mineral water for medical purposes are similar to the opponent’s mineral water in Class 32 (BX No 389 230). These goods have the same nature, given that they are kind of waters, and have a similar purpose. They are often produced by the same or similar undertakings. Furthermore, they may be offered to the same end consumer.

The contested wraps of natural or chemical substances for hygienic and bath purposes; sanitary wear; mud for wraps and for the bath; mud wraps; hot mud wraps wraps of natural or chemical substances for hygienic purposes; sanitary wear are similar to the opponent’s cosmetics (BX No 372 307). These goods may coincide in purpose, distribution channels, target the same consumer and are often manufactured by the same companies.

The contested oxygen baths (mentioned twice); therapeutic mud bath preparations; therapeutic mud bath preparations; bath (therapeutic preparations for the -); salts for mineral water baths; wraps of natural or chemical substances for bath purposes; mineral water salts; mineral saltsbath (therapeutic preparations for the -) are similar to a low degree to the opponent’s cosmetics (BX No 372 307). These goods may have the same distribution channels, target the same public and may be manufactured by the same kind of undertakings.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar (to various degrees) are directed at both the public at large, for example lotions for skin in Class 3, and at professionals in the medical and healthcare field, as is the case with pharmaceutical preparations in Class 5. Some of the contested goods, such as the broad category of the applicant’s pharmaceutical preparations can include preparations that are relatively cheap and are sold directly to the consumer without prescription, while it can also include other goods that are more specialised drugs for treating serious health problems. It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

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

3. The signs

SPA
Earlier trade marks	Contested sign

The relevant territories consist of the Benelux countries.

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

The earlier marks are both word marks composed of the word ‘SPA’. The contested sign is a figurative mark consisting of the words ‘HEALTH’, ‘SPA’ and ‘PIEŠŤANY’, written in a fairly standard typeface in blue capital letters of which the first letters of each word are slightly bigger. On top appears a figurative element in the form of a frame with three corners outlined in light blue and dark blue inside, in which appears the silhouette of a human body.

The earlier marks ‘SPA’ refer to the name of a Belgian town famous for its mineral and thermal sources, the Belgian racing circuit of Spa-Francorchamps and may also denote a reference to hydrotherapy such as hammams or saunas and is a generic term for health and wellness centres providing treatment services for the body based on hydrotherapy (12/11/2009, T-438/07, SpagO, EU:T:2009:434, § 28; 19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 31; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 44; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81; 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. In this regard the Opposition Division does not agree with the opponent’s argument where it points out that even though the word ‘SPA’ may have a meaning in the English language, this is not relevant for the Benelux consumers, since English is not an official language in the Benelux.

Nevertheless, the Opposition Division points out that while it is true that the word ‘SPA’ is generic, for example, for services in Class 44, as it merely designates the place where treatment services for the human body are offered, it is 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; 15/02/2017, R 436/2016-4, THE BODY SHOP SPA OF THE WORLD (fig), § 37; 09/01/2017, Olive Spa Feel the Natural Beauty (fig), § 40), where the term was considered distinctive for cosmetic products.

Furthermore, and according to the opponent, the term has also been considered distinctive, according to a decision taken on 03/02/2011 by the Brussels Commercial Court, confirming the validity of the trade mark ‘SPA’ to designate goods in Class 3 in the Benelux countries. The word ‘SPA’ is only descriptive and generic of one of the places in which cosmetic products are used or marketed, places for hydrotherapy such as hammams and saunas, but this cannot lead to the conclusion that the word is descriptive or generic for the opponent’s products in Class 3. In sum, the sole element ‘SPA’ of the earlier marks has a normal degree of distinctiveness in relation to the goods in Class 3. The same is applicable for the goods in Class 32, of the other earlier mark, which is also inherently distinctive.

With respect to the contested sign, the words ‘HEALTH’, ‘SPA’ and ‘PIEŠŤANY’ are visually separated from each other. Indeed the word ‘HEALTH‘ will be understood by a significant part of the Benelux public, since it is a word belonging to the basic English vocabulary, as referring to ‘the state of being bodily and mentally vigorous and free from disease; the general condition of body and mind; of or relating to health’ (see Collins English Dictionary online). It is, therefore, a non-distinctive element for, for example the goods in Class 5 that have clearly a medical purpose, and for the remaining part of the goods, such as those in Class 3 and those in Class 5 that are not so clearly indicating a medical purpose, as being a weak element. Furthermore, the element ‘SPA’ in the contested sign is perceived as having the same meaning as in the earlier marks. This element is normally distinctive for the contested goods in Class 3. The same is also applicable for the goods in Class 5, following the reasoning of the Board of Appeal (30/11/2016, R 2477/2015-2, DOT SPA COSMETICS, §99). The applicant has not submitted any arguments to the contrary. The word ‘PIEŠŤANY’ is a meaningless term for the majority of the relevant public, since it is a small town in Slovakia that a significant part will not know of. Therefore, it will not be perceived as such. This term is also distinctive for the relevant goods. The figurative element in the form of a frame with three corners outlined in light blue and dark blue inside, in which appears the silhouette of a human body, could be considered weak, since it could refer to the fact that the products are to be used for persons.

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

Visually, the signs coincide in the word ‘SPA’, meaning that the whole earlier marks ‘SPA’ are entirely included in the contested sign, with the only difference the typeface in which this word is written, being this anyway fairly standard. Even though in the contested sign, this element is equally dominant, it can certainly not be overlooked, as it is clearly visible. Furthermore, the word ‘SPA’ is, however, distinctive for the goods at stake and plays an independent role in the contested sign, since it is clearly separated from the other word elements. The marks differ in the first word element ‘HEALTH’ of the contested sign, which is a weak or non-distinctive element, the word ‘PIEŠŤANY’, which is normally distinctive, and also in the figurative element on top, which is also weak, for the reasons explained above.

Furthermore, 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 also applicable in the case at hand with respect to the figurative element, apart from the fact that the picture of a human body is also a weak part.

Therefore, taking all the aforementioned into account and also the distinctiveness issues, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable /SPA/, present identically in the signs under comparison. The pronunciation differs in the sound of the lowly distinctive or non-distinctive word ‘HEALTH’ and the equally distinctive word /PIEŠŤANY/, the latter falling at the end, where the consumer normally focuses less its attention.

Therefore, taking all the aforementioned into account and also the distinctiveness issues, the marks are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning to the extent that they both refer to the concept of ‘SPA’, which is a distinctive element. Furthermore, the verbal element ‘HEALTH’ in the contested sign is also perceived as having a meaning, which has been pointed out above already, and whose character is of limited distinctiveness or it is non-distinctive. The remaining part of the marks, the element ‘PIEŠŤANY’ will not be understood, and the figurative element of the contested sign in the form of a human body refers to this concept as such, but is also weak.

Therefore, taking all the aforementioned into account and also the distinctiveness issues, the marks are conceptually similar to an average degree.

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

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.

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

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

Regarding the other earlier mark, Benelux trade mark registration No 389 230, according to the opponent, it has a reputation in the Benelux countries in connection with all the goods for which it is registered and on which the opposition is based, namely those in Class 32.

However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 goods in question from the perspective of the public in the relevant territory. Therefore, the inherent distinctiveness of the earlier mark must be seen as normal for the goods in Class 32.

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 partly identical or similar (to various degrees). The level of attention by the consumer in question varies from average to above average. The earlier marks have both a normal inherent degree of distinctiveness for the goods in Classes 3 and 32. The marks are visually similar to a low degree and phonetically and conceptually to an average degree.

In combined marks with words and devices, the public would focus more on the word elements. Furthermore, even though the term ‘SPA’ in the contested sign is placed in the middle of the word elements, it is still clearly visible, it is preceded by a lowly distinctive or non-distinctive word element ‘HEALTH’, which plays an autonomous role within it, since it is separated from the remaining elements, and the equally distinctive word ‘PIEŠŤANY’ falls at the end where the consumer usually focuses less its attention.

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

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

The relevant consumers might be led, therefore, by the visual, aural and conceptual similarity of the word ‘SPA’, to believe that the identical and similar (to various degrees) goods in Classes 3 and 5 covered by the marks under comparison come from the same undertaking or economically-linked undertakings. Taking into account all the circumstances, the differences between the signs are not sufficient to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish the marks in dispute and will perceive them as having the same origin.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registrations Nos 372 307 and 389 230, both for the word mark ‘SPA’. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of one of the opposing marks due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Saida CRABBE

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.