OPPOSITION No B 3 121 083

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 Calysta, Lambroekstraat 5A, 1831 Diegem, Belgium (professional representative)

a g a i n s t

‘Asia Waters Company’ Limited Liability Partnership, Nursultan Nazarbayev Avenue 223, n.a. 243, Bostandyk district, 050059 Almaty, Kazakhstan (applicant), represented by Intelektuālā Īpašuma Juridiskā Firma Latiss, 44 Stabu Str. Office 21, 1011 Riga, Latvia (professional representative).

On 03/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 083 is rejected in its entirety.

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

REASONS

On 15/05/2020 the opponent filed an opposition against, initially, all the goods and services of European Union trade mark application No 18 194 418 for the figurative mark , but subsequently limited the extent of the opposition to all the goods in Classes 32 and 33 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 140 574 for the word mark ‘SPA’ (hereinafter referred to as earlier mark 1), in relation to which the opponent invoked Article 8(1)(b) EUTMR, and on Benelux trade mark registration No 389 230 for the word mark ‘SPA’ (hereinafter referred to as earlier mark 2) in relation to which the opponent invoked Article 8(1)(b) and 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.

a) The goods

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

Earlier mark 1

Class 32: Fruit drinks and fruit juices, and other non-alcoholic drinks (except mineral and aerated waters); syrups and other preparations for making beverages.

Earlier mark 2

Class 32: Mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages.

The contested goods and services are, after the limitation of the extent of the opposition, are the following:

Class 32: Aloe vera drinks, non-alcoholic; aperitifs, non-alcoholic; barley wine [beer]; beer; beer wort; beer-based cocktails; carbonated water; preparations for making carbonated water; cider, non-alcoholic; cocktails, non-alcoholic; energy drinks; extracts of hops for making beer; fruit juices; fruit nectars, non-alcoholic; ginger beer; grape must, unfermented; isotonic beverages; kvass; lemonades; lithia water; malt beer; malt wort; mineral water [beverages]; must; non-alcoholic beverages; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages flavoured with tea; non-alcoholic dried fruit beverages; non-alcoholic essences for making beverages; non-alcoholic fruit extracts; non-alcoholic fruit juice beverages; non-alcoholic honey-based beverages; non-alcoholic preparations for making beverages; orgeat; pastilles for effervescing beverages; powders for effervescing beverages; protein-enriched sports beverages; rice-based beverages, other than milk substitutes; sarsaparilla [non-alcoholic beverage]; seltzer water; shandy; sherbets [beverages]; smoothies; soda water; soft drinks; soya-based beverages, other than milk substitutes; syrups for beverages; syrups for lemonade; table waters; tomato juice [beverage]; vegetable juices [beverages]; waters [beverages]; whey beverages.

Class 33: Anise [liqueur]; anisette [liqueur]; aperitifs; arrack [arak]; alcoholic beverages containing fruit; alcoholic beverages, except beer; baijiu [Chinese distilled alcoholic beverage]; bitters; brandy; cider; cocktails; curacao; digesters [liqueurs and spirits]; distilled beverages; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic; gin; grain-based distilled alcoholic beverages; hydromel [mead]; kirsch; liqueurs; peppermint liqueurs; perry; piquette; pre-mixed alcoholic beverages, other than beer-based; rice alcohol; rum; sake; spirits [beverages]; sugarcane-based alcoholic beverages; vodka; whisky; wine.

Class 35: Provision of an online marketplace for buyers and sellers of goods and services; presentation of goods on communication media, for retail purposes.

Some of the contested goods and services are identical or similar to the opponent’s goods. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to the goods of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

b) 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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to above average. For example, it will be average for the opponent’s goods in Class 32 and the contested goods in Classes 32 and 33, since nothing in their nature, manner of purchase or average price requires that consumers are particularly attentive and observant when choosing such goods. However, the degree of attention will be above average for example, for the contested services in Class 35, since they could be purchased by specialists in a particular field for a very specific purpose, because of their specialised nature and conditions and/or their price.

c) The signs

SPA
Earlier trade marks	Contested sign

The relevant territory is the European Union (earlier mark 1) and Benelux (earlier mark 2).

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).

Both earlier trade marks are the same word mark ‘SPA’. For reasons of simplicity, both marks will hereinafter be referred to as one mark in the singular.

The earlier mark is the word mark ‘SPA’. The contested sign is a figurative mark consisting of the word ‘SPARROW’, written in fairly standard green upper-case letters, below a figurative element in the form of a gold circle and a bird (a sparrow) sitting on a branch.

The earlier mark ‘SPA’ refers to the name of a Belgian town famous for its mineral and thermal sources and the Belgian racing circuit of Spa-Francorchamps. It may also refer to hydrotherapy such as hammams or saunas and is a generic term for health and wellness centres providing hydrotherapy-based treatments for the body (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 / SPA et. al., § 36; 03/11/2008, R 219/2005‑4, BUBBLE SPA / SPA (fig.) et. al., § 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 Benelux. Although it has the meaning as explained above, it has no particular relationship to the relevant goods and is, therefore, inherently distinctive to a normal degree.

The verbal element ‘SPARROW’ in the contested sign will be seen as a whole and perceived as a meaningless term for part of the relevant public, in particular for the non-English-speaking public. However, particularly for the English-speaking public, it will be perceived as ‘any weaverbird of the genus Passer and related genera, esp the house sparrow, having a brown or grey plumage and feeding on seeds or insects’ (information extracted from Collins English Dictionary on 14/04/2021 at www.collinsdictionary.com/dictionary/english/sparrow). The figurative elements in the form of a bird or a sparrow sitting on a branch, will either reinforce the meaning of the verbal element ‘SPARROW’, when understood, or will be perceived as a bird in general (sitting on a branch) or as a sparrow, even if the meaning of the word ‘SPARROW’ is not understood. The gold circle is just a simple geometric shape without any particular meaning. Although the figurative and/or verbal elements of the contested sign are perceived as having the abovementioned meaning(s), they have no clear relation to the relevant goods and services and they are distinctive.

In its observations of 14/10/2020 the opponent argued that the most distinctive element of the contested sign is the word ‘SPARROW’. The Opposition Division disagrees with this view because the figurative elements, namely the bird (sparrow) sitting on a branch, are equally distinctive as they have no particular relationship to the relevant goods and services. Therefore, the opponent’s argument must be set aside.

The Opposition Division concurs with the applicant in its observations of 23/12/2020, in which it stated: ‘… we would like to point out that the consumer will not artificially separate the part SPA from the full context of the word SPARROW … so the consumer will … perceive the word SPARROW as a whole, not separating it into the parts’. It is indeed important to point out that the verbal element ‘SPARROW’ will not be split into elements, such as ‘SPA’ and ‘RROW’, as there is no reason to split the mark in that way. The components/syllables ‘SPA’ and ‘RROW’, if separated, would make no sense. The verbal element ‘SPARROW’ forms an indivisible unit, even for that part of the public who would not understand the meaning of the word ‘SPARROW’ (the non-English-speaking consumers).

Furthermore, the contested sign has no element which could be considered clearly more dominant (visually eye-catching). All the elements have a comparable visual impact and none of the elements can be held clearly more dominant than the others.

Visually, the marks coincide in the string of letters ‘SPA*’. The marks differ in the final letters ‘*RROW’ of the contested sign, in its typeface and colour, which are in any case fairly standard, including the colour green, and in the figurative elements that have no counterparts in the earlier mark.

Furthermore, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The earlier mark is a short mark (three letters) and the differences are clearly perceivable even if only compared to the verbal element ‘SPARROW’ of the contested sign.

In its observations of 19/03/2021, the opponent mentioned that when signs consist of both verbal and figurative components the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. However, the verbal element of a sign does not automatically have a stronger impact than the figurative elements of a composite mark (31/01/2013, T‑54/12, Sport, EU:T:2013:50, § 40). Accordingly, each sign has to be evaluated on a case‑by‑case basis. In the present case the figurative element in the contested sign is placed in the first position (uppermost part) and, bearing in mind its particular depiction and size, it will not have a lower impact than the verbal element. Indeed, all the elements have their relevance within the contested sign. Therefore, the opponent’s argument must be set aside.

In its observations of 14/10/2020, the opponent mentioned that the beginnings of signs are usually more important as consumers tend to focus their attention on this part of the sign first. However, other elements can be just as important as the elements at the beginning (20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39). The figurative element of the ‘sparrow’ or bird in general, is placed at the top and catches the consumer’s attention first, but the string of letters ‘SPA’ followed by the letters ‘RROW’ are also important. Therefore, the opponent’s argument must be set aside.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SPA*’, present identically in both signs. The pronunciation differs in the sound of the letters ‛*(R)ROW’ of the contested sign, which has no counterparts in the earlier mark. Furthermore, the earlier mark is pronounced in one syllable /SPA/, whereas the contested sign is pronounced in two /SPA-(R)ROW/, having a different rhythm and intonation.

Therefore, taking into account all the aforementioned (such as the difference in length, rhythm and intonation), the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with different meanings, they are conceptually not similar. The figurative element of the contested sign gives it a clear concept that is entirely different from that of ‘SPA’, even for that part of the public who will not perceive the meaning of the verbal element ‘SPARROW’.

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

d) 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 claimed that the earlier mark has been extensively used and enjoys an enhanced scope of protection for the goods in Class 32. However, for reasons of procedural economy, the evidence submitted by the opponent to prove this claim does not have to be assessed here (see below in ‘Global assessment’) but will be examined below under Article 8(5) EUTMR. The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness for the goods in Class 32.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods and 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 appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are assumed identical, and they target the public at large and a more professional public whose level of attention varies from average to above average.

The Opposition Division has assumed in section d) that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The signs are visually and aurally similar to a very low degree and conceptually not similar. Although the signs coincide in some letters and sounds, namely ‘SPA’, the contested sign contains four additional letters ‘RROW’ or one additional syllable ‘(R)ROW’, which will not be overlooked, in particular bearing in mind how short the earlier mark is. Furthermore, the verbal element of the contested sign will be perceived in its entirety as a fanciful word (by the non-English-speaking public) or as referring to a type of bird (by the English-speaking public), and there is no particular reason to single out the ‘SPA’ string from ‘SPARROW’. They also differ in the figurative elements, placed at the top (the beginning) of the contested sign, where consumers usually focus their attention first. Moreover, the string of letters ‘SPA’ does not play an autonomous and independent role in the contested sign, but rather forms part of the indivisible verbal element ‘SPARROW’.

It follows that the conceptual difference between the signs, taken in conjunction with the very low visual and aural similarity, is enough to counteract the assumed identity between the goods and services and the assumed enhanced distinctiveness of the earlier mark.

All these differences significantly affect the overall impression of the signs. An examination of the similarity between the signs must take account of the overall impressions produced by those signs, since the consumer normally perceives a sign as a whole and does not examine its individual details or dissect it. Given that the earlier mark is rather short, the visual and aural differences between the signs are all the more noticeable. Their difference in four letters and in all the remaining figurative elements of the contested sign is relevant when evaluating the likelihood of confusion between them. Indeed, small differences may frequently lead to different overall impressions in short words (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39).

Therefore, the differences between the signs are clearly perceivable and sufficient to exclude any likelihood of confusion or association between them, even though they cover goods and services that are assumed to be identical for the relevant public. This is even more so for those services in Class 35, as the consumers’ level of attention is above average and, therefore, they are even more able to distinguish between the marks.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on the ground of Article 8(1)(b) EUTMR.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use and/or reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use and/or reputation in this section.

The opponent, in its observations of 14/10/2020, refers to previous decisions of the Office to support its arguments of likelihood of confusion, for example (28/06/2019, R 479/2018‑4, Axactor / AXA; 12/08/2020, B 3 090 913, v ; 28/08/2020, B 3 093 535, PSD v PSDtrue; 03/07/2020, B 3 071 301, v SKYTONE). However, 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).

In the first case (28/06/2019, R 479/2018‑4, Axactor / AXA), both marks are word marks, and they are meaningless terms, whereas in the present case the contested mark is a more complex one consisting of verbal and figurative elements, and both marks have a meaning. In the two ‘SKY’ cases (12/08/2020, B 3 090 913 and 03/07/2020, B 3 071 301), the contested sign would be perceived as a combination of, respectively, the words ‘SKY’ and ‘TREK’ and ‘SKY’ and ‘TONE’, both having their individual concepts, whereas in the present case the word ‘SPARROW’ would not be dissected and would be perceived as an indivisible unit. In the PSD case (28/08/2020, B 3 093 535), the verbal element ‘true’ would be perceived as having a meaning and is non-distinctive, while the combination of letters ‘PSD’ is distinctive and the earlier mark is entirely contained in the most distinctive part of the contested sign, whereas the same does not apply in the present case. Therefore, these cases referred to by the opponent are not relevant to the present proceedings. For this reason, the Opposition Division finds that these decisions are not comparable with the case at issue.

However, the Opposition Division points out that even if some previous decisions may to some extent be factually similar to the present case, the outcome may not be the same. While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division may to some extent be factually similar to the present case, the outcome may not be the same.

As the opposition has to be rejected as far as it is based on Article 8(1)(b) EUTMR, the Opposition Division will now examine the opposition on the ground of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent has claimed reputation in Benelux in relation to earlier Benelux trade mark registration No 389 230 for the word mark ‘SPA’ for goods in Class 32 (earlier mark 2).

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 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.

a) Reputation of the earlier trade mark

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

Class 32: Mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages.

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 10/02/2020. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Benelux prior to that date.

The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation.

On 11/06/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 16/10/2020 to submit further facts, evidence and arguments.

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. However, this approach is not applicable where it is clear that the evidence is publicly available (as is the case for instance with online material, advertising or press materials), and the Opposition Division will consider this below.

The evidence submitted on 14/10/2020 and 15/10/2020 consists of, inter alia, the following documents.

 Extracts from the publication Le Guide du Buveur d’Eau (revised edition, 1997) by Emmanuelle Evina, referring to more than 90 mineral and spring waters and citing, on pp. 241‑245, the trade mark ‘SPA’. It further mentions the international reputation of the trade mark on p. 241, as well as the high purity of the mineral water ‘SPA REINE’.

 An extract from the Belgian weekly magazine Echos de Spa-Theux, issue 26 dated 26/08/1998, entitled ‘Bons Baisers de Spa: Spa Monopole en cartes postales’, referring to the fact that the company Spa Monopole is not only known all over the world but has also become a magnet for tourists in the region, with approximately 40 000 visitors annually. Its last paragraph cites the word mark ‘SPA’.

 An extract from the Belgian daily magazine La Meuse Verviers dated 07/12/1999, entitled ‘Les artistes en bouteille’ (‘Les artistes’ bottled), relating to the opening of the 35th harnessing for Spa Monopole. It mentions that the company produces 500 000 000 litres per year, with a capacity of 800 000 000.

 Extracts from the book The Original Spa Waters of Belgium by L. M. Crismer, 1989, pp. 9-11, 65-67, 72, 75, 88, 96, 99 and 103. A range of labels showing the word mark ‘SPA’ since 1921 are on pp. 66-67. The book, furthermore, gives a history of the waters of Spa.

 An extract from a publication entitled The Good Water Guide (revised edition, 1994) by Maureen & Timothy Green – ‘The World’s Best Bottled Waters’, referring to ‘SPA REINE’ as being among the best-known light mineral waters in the world and showing a label bearing the word mark ‘SPA’ on p. 88.

 An extract from the publication The Famous Brands (1985) by Theo Visser & Robert-Jan Heijning, Editions Markgraaf, p. 122, referring to the ‘SPA’ mineral water. Furthermore, it mentions that ‘the sale of SPA water assumed enormous proportions’.

 An extract from a supplement to the newspaper La Dernière Heure dated 10/06/1994, entitled ‘Special Nature l’Eau’, referring to ‘SPA’ on pp. 4 and 8.

 An extract from the Eco Soir - Le Soir dated 01/09/2000, regarding the company Spa Monopole, entitled ‘Depuis ses terres ardennaises, Spadel veut pétiller, encore et encore’ (translated as ‘From its Ardennes lands, Spadel wants to sparkle, again and again’).

 Information regarding the events sponsored by the opponent: an extract from the website www.spa.be regarding sporting and cultural events and including a leaflet regarding the sponsorship of 20 km de Bruxelles – Edition 2000, in which the participants wore a number showing the word mark ‘SPA’.

 An affidavit from Mr MdB, Director of S.A. Spa Monopole N.V. dated 23/03/2015, regarding the sales figures and the global advertising budget (advertisement, sponsoring and brand support) for products sold in the Benelux countries by S.A. Spa Monopole N.V. under the trade mark ‘SPA’ (natural mineral waters, carbonated mineral waters, soft drinks and other non-alcoholic drinks) from 1990 to 2014.

 An extract relating to various advertisements of the trade mark ‘SPA’, illustrating the financial investments made by Spa Monopole and showing the importance of ‘SPA’ for a healthy lifestyle.

 Extracts from the magazine Trends Tendances, No 51-52 dated 23/12/1999, No 51 dated 21/12/2000 and No 50 dated 11/12/2003. These cite the ‘Top 5 000 biggest enterprises in Belgium’ and show the turnover of Spa Monopole for 1997-1998, 1998-1999, 2001 and 2002. The extracts show that the opponent ranks third in the first two lists and third in the breweries and soft drinks sector.

 Extracts from the magazine bottledwaterworld dated May-June 2001, stating among other things: ‘We will protect Spadel’s position in the Benelux market leader through a very strong programme of innovation and commercial dynamism’, and ‘With volume sales around 600 million litres, Spadel is market leader in mineral water in the Benelux countries’.

 Extract from the publication Le Grand Livre de l’Eau: Histoire, Traditions, Environment, Art de Vivre (2000) by Jacques Mercier, published by La Renaissance du livre, citing Spa Monopole on p. 112 and listing various mineral water trade marks in Belgium, mentioning on p. 117 that ‘SPA is the leader with 23.6 % of the market’. The publication also states that ‘SPA produces 2 million litres a day and sells 240 million litres per year in Belgium’.

 An extract from an article in La Libre Entreprise dated 22/07/2000, entitled ‘Que d’eaux, que d’eaux’ (translated as ‘Only waters, only waters’). It states: ‘We can distinguish mainly mineral waters and spring waters. A water is mineral if it presents some healthy characteristics and this is the case for waters of Evian, Volvic, Vittel and Valvert but also for our national waters Spa and Chaudfontaine’. It refers to Spadel as a market leader.

 Copies of three labels affixed to the opponent’s goods, showing that ‘SPA’ mineral water is recognised by the Royal Academy of Medicine in Belgium as being highly beneficial for health, and also showing use of the word mark ‘SPA’.

 An extract from the decision regarding Estee Lauder Cosmetics (Appeal Court Brussels, dated 31/03/1983).

 An extract from the magazine Trends Tendances, No 30-31 dated 25/07/2002, entitled ‘Nestle Waters/Spadel – Des Eaux fortes’ (translated as ‘Nestlé Waters/Spadel – Strong waters’) mentioning:

Il y a un an, Nestlé ravissait la première place sur le segment des eaux plate, le groupe Spadel restant en tête sur le marché total, grâce à ses eaux pétillantes. Avec leurs marques fortes, les deux groups livrent aujourd’hui une solide bataille sur un marché pourtant bien encombré et squatté par les marques de distributeurs.

(translated as ‘A year ago, Nestlé took the first place in the flat water segment, with the Spadel group on the lead in the total market thanks to its sparkling waters. With their strong brands, the two groups are today fighting a tough battle in the market that is very crowded and squatted by the marks of distributors’).

 An extract from Harden’s London Baby Book 2002/03 by Kate Calvert, stating that ‘SPA Reine still natural water is uniquely suited to both pregnant and feeding mothers, babies and young children because of its very low mineral and salt content. This means that it delivers the essential functions of water very effectively while having a clean neutral taste’.

 Extracts from the 1991 and 1993-1997 annual reports relating to advertisements by the opponent showing the image of purity of the ‘SPA’ mineral water.

 An extract from a leaflet regarding the Biennial Spa Foundation Prize, ‘The Original Spa Water’, created in 2003.

 An extract from an article in the Belgian newspaper La Libre Belgique dated 20/12/2005, citing the trade mark ‘SPA’ as ‘the 7th most valuable Belgian trade mark with a turnover of 185 million euros’.

 A copy of the independent Reader’s Digest survey of Europe’s most trusted brands, citing ‘SPA’ as the seventh most trusted brand for soft drinks in Belgium and the Netherlands for 2003-2005.

 An extract from an article in L’Echo dated 17/01/2003, citing Spadel as the leader in the water market: ‘Among the brands of water, Spadel remains No 1 with 20.69 % of the market’.

 Extracts from articles regarding the reputation of the trade mark ‘SPA’: in Het Laatste Nieuws dated 13/03/2003, stating ‘SPA is the most popular brand for waters’; in La Dernière Heure dated 13/03/2003, referring to ‘SPA’ as the most preferred trade mark for waters; and in De Financieel-Economische Tijd dated 17/03/2003, stating that ‘Spadel succeeded in growing its operating profit by two figures last year’.

 An extract from an article in the Belgian newspaper La Dernière Heure – Les Sports dated 30/01/2009, entitled ‘SPA couronnée meilleure eau d’Europe’, together with an English translation. The article mentions, inter alia, that the 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 using four criteria: the intrinsic characteristics of the goods, the company’s policy in the field of protection of natural resources, 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 of the press report from CERAM is enclosed dated 29/01/2009, and an extract from the Belgian newspaper Le Soir dated 30/01/2009.

 Extracts from the website www.wherebrandsbecomestars.com/The-Brand-Rankings.aspx, printed on 29/04/2010, showing the trade mark ‘SPA’ in 22nd place amongst the 100 best performing ‘food and beverage’ brands in Dutch supermarkets for 2008-2009.

 An extract from a Colruyt catalogue, a Belgian supermarket, dated 19/05/2010-01/06/2010, showing a 30-year campaign, in particular of ‘SPA’ mineral water, which was first commercialised in 1980. The label used in 1980 is compared to the label used in 2010.

 An extract from the Belgian publication Bizz dated June 2010, entitled ‘La cure de jouvence d’une eau multicentenaire’ (translated as ‘The cure of youth of a multicentenary water’).

 Extracts from the 2005-2007 and 2009-2013 annual reports 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’.

 An extract from an article in Entreprendre Today dated 25/04/2012, concerning an opinion poll conducted by the independent company Akkanto, which shows that SPADEL (with its trade marks ‘SPA’ and ‘BRU’) has the second-best reputation among the top 10 Belgian companies. The poll was conducted among 14 000 Belgians during January and February 2012.

 Extracts from several press articles dated between 2008 and 2011 relating to ‘SPA’:

o from the newspaper De Tijd dated 30/01/2008, entitled ‘De Spa- saga gaat door’ (translated as ‘The Spa saga continues’), relating to a new advertisement by Spa Monopole;

o from StoreCheck dated April 2008, relating to ‘SPA’ bottles containing 25 % recycled material;

o from L’Echo dated 27/05/2008, relating to the communication strategy of Spa Monopole;

o from Het Laatste Nieuws dated 23/06/2008, containing a short interview by Spadel related to the competition from tap water;

o from La Meuse dated 05/07/2008, referring to the fact that the ‘SPA’ bottle has been chosen as the most beautiful bottle;

o from Forward dated September 2008, relating to the use of recycled material in ‘SPA’ bottles;

o from Gazet van Antwerpen dated 11/10/2008, mentioning that the slogan of ‘SPA’ is one of the best-known advertising slogans in Belgium;

o from Belga dated 10/10/2008, relating to the fact that Spadel won a European award for recycled bottles;

o from Le Soir dated 17/01/2009, referring to the ‘SPA’ trade mark;

o from La Meuse dated 15/01/2008, showing the ‘SPA’ bottle;

o from Journal des Régions dated 01/04/2009, referring to the CERAM award won by ‘SPA’ and showing the ‘SPA’ trade mark;

o from HR Magazine dated 01/03/2009, mentioning that the ‘SPA’ mineral water had been part of the Belgian landscape and historical and economic heritage for many years;

o from Magazine Unicef dated April 2009, mentioning ‘SPA’ as a partner of UNICEF Belgium;

o from Super Magazine dated June 2009, relating to the most popular trade marks in Belgium;

o from Le Soir dated 19/05/2009, citing the ‘SPA’ trade mark;

o from La Libre Belgique dated 11/05/2009, mentioning that Belgians’ favourite water was ‘SPA’ according to a poll conducted by the advertising agency LDV United;

o from Kiosk dated 01/06/2009, relating to the new ‘SPA’ bottle;

o from La Lettre de la Fondation Louvain dated April 2009, referring to Spadel’s partnership with a Belgian university;

o from Le Journal des Ingénieurs, citing the ‘SPA’ trade mark;

o from De Tijd dated 23/02/2010, mentioning that Spadel invested EUR 13 million in ‘SPA’;

o from Weekend dated 28/05/2010, showing the new ‘SPA’ bottles;

o from Humo dated 29/06/2010, citing the ‘SPA’ trade mark;

o from Het Laatste Nieuws dated 14/08/2010, relating to the new ‘SPA’ bottles for kids;

o from Prestige dated 15/09/2010, referring to the relationship between ‘SPA’ and the Belgian citizen;

o from Shelf Live dated January 2011, relating to a new look for refreshing beverages from ‘SPA’;

o from La Meuse dated 28/01/2011, citing the ‘SPA’ trade mark;

o from La Dernière Heure dated 05/03/2011, referring to ‘SPA’ as the historical sponsor of the 20 km de Bruxelles sporting event.

 Extracts from the magazine Trends Top 2012 (supplement to Trends-Tendances of 06/12/2011), Trends Top 2013 (supplement to Trends-Tendances of 06/12/2012) and Trends Top 2014 (supplement to Trends-Tendances of 05/12/2013). These extracts relate to the ranking of the top 5 000 biggest companies in Belgium according to financial results in 2009-2011 and show Spa Monopole to be in 3rd place in its sector (non-alcoholic and alcoholic beverages). The turnover figures of Spa Monopole were EUR 121 776 000 in 2011 and EUR 122 280 000 in 2012.

 An extract from the magazine Trends Top 2015 (supplement to Trends-Tendances No 50 of 11/12/2014). This extract relates to the ranking of the top 5 000 biggest companies in Belgium according to financial results in 2012-2013 and show Spa Monopole in 3rd place in its sector (non-alcoholic and alcoholic beverages). Spa Monopole’s turnover figures were EUR 123 004 000 in 2013 and EUR 133 959 000 in 2014.

 An extract from the magazine Trends Top 2016 (supplement to Trends-Tendances No 50 of 10/12/2015). This extract relates to the ranking of the top 5 000 biggest companies in Belgium according to financial results in 2013 and 2014 and shows Spa Monopole in 3rd position in its sector (non-alcoholic and alcoholic beverages).

 An extract from the magazine Trends Top 2016 (supplement to Trends/Tendances No 45 of 10/11/2016) and Trends Top 2017 (supplement to Trends/Tendances No 45 of 09/11/2017). These extracts relate to the ranking of the top 5 000 biggest companies in Belgium according to financial results in 2015-2016 and show Spa Monopole in 5th position in its sector (non-alcoholic and alcoholic beverages).

 An extract from an article in the Belgian newspaper La Libre Belgique dated 30/11/2016, entitled ‘Les eaux SPA visent l’Horeca néerlandais’ (translated as ‘The SPA waters target the Dutch food service industry’). It mentions Spadel’s market share in Belgium and the Netherlands: ‘SPA’ owns approximately 30 % in the sector of large retailers of bottled water in the Netherlands. In Belgium, the group has approximately 20 % of the market share of all food and beverage sectors.

 The opponent’s 2014-2017 annual reports, however, the figures mentioned cannot be revealed for confidentiality reasons. The annual reports show many pictures and examples of packaging used. For example, in 2011, the range of aerated waters was updated, and the imagery also changed, with different coloured logos for lightly sparkling waters. Furthermore, the different waters also came in glass bottles and cans. The reports also refer to many publicity campaigns to promote ‘SPA’ products in different years and in the various Benelux countries.

 An extract from the magazine Trends/Tendances dated 24/10/2013, on Marc du Bois (CEO of Spadel), who was elected manager of the year due to his ability to maintain ‘SPA’ as leader on the Benelux market.

 An extract from an article from La Libre Belgique dated 26/03/2015, with the annual turnover of Spadel in 2014.

 An extract from an article from Le Soir dated 27/03/2015, regarding the most influential trade marks in Belgium, based on an Ipsos study. ‘SPA’ is ranked in the top 20.

 An extract from an article from the Belgian magazine/website Knack ‘Data News.be, dated 27/03/2015, regarding the ‘Ipsos’ study, mentioning that ‘SPA’ is now ranked in 16th position.

 An extract from an article from L’Echo dated 31/03/2015, regarding the ‘Meaningful Brands’ study of the ‘Havas Media’ agency. According to the study, ‘Colruyt’, ‘Spa’ and ‘Tirlemont sugar’ are the top 3 brands that inspire the best collective well-being on the Belgian market.

 Copies of case-law decisions confirming the reputation of the trade mark ‘SPA’ in Class 32 in the Benelux countries:

o rendered by the Court of Commerce of Brussels, dated 19/12/2003, in the case ‘SPA’ versus ‘ART OF SPA’, with an English summary (Ingénieur Conseil No 4, 2003, pp. 359-378), ordering the cancellation of the Benelux trade mark ‘ART OF SPA’ in Class 3.

o rendered by the Court of Appeal of Brussels, dated 04/09/2007, ruling on cases R.G. 2004/AR/1447 and 2007/AR/105, together with a translation thereof, confirming the judgment of the Court of Commerce of Brussels, dated 19/12/2003, in the ‘ART OF SPA’ case.

o rendered by the Court of Appeal of Liège (Belgium), dated 08/03/2010, confirming the reputation of, inter alia, the trade mark ‘SPA’ in Class 32 in the Benelux countries and an English translation of some extracts from it (21 pages). A copy of this decision, together with a summary in English (ICIP – Ingénieur Conseil No 1/2010, pp. 59‑62) (3 pages), namely a full translation into English of the decision rendered in French by the Court of Appeal of Liège).

o rendered by the Court of Commerce of Brussels, dated 03/02/2011, in the case of Spa Monopole versus The Body Shop International (SPA WISDOM), and an English translation of some extracts from it.

o rendered by the Court of Appeal of Brussels, dated 16/09/2016, confirming the judgment of the Court of Commerce of Brussels, dated 03/02/2011, in the case of Spa Monopole versus The Body Shop International (SPA WISDOM).

Conclusion on reputation

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 earlier trade mark has been subject to long-standing and intensive use and is generally known in the mineral water sector, in which it enjoys a leading position on the Benelux market (see, inter alia, The Good Water Guide; The Famous Brands; bottledwaterworld; Le Grand Livre de l’Eau: Histoire, Traditions, Environnement, Art de Vivre; Het Laatste Nieuws dated 13/03/2003; La Dernière Heure dated 13/03/2003; De Financieel-Economische Tijd dated 17/03/2003; La Dernière Heure dated 30/01/2009 and the various publications of the magazine Trends Top, dated between 2011 and 2016). In addition, this is attested by a variety of independent sources, impressive figures (such as ‘SPA’ being the market leader with a 23.6 % share and a production of 2 000 000 litres per day and between 500 000 000 and 600 000 000 litres per year, according to Le Grand Livre de l’Eau: Histoire, Traditions, Environment, Art de vivre), publications in books and magazines, press releases, and decisions of national courts. Furthermore, the continuous advertising and promotional campaigns since 1923 are particularly significant.

There is also a press article showing that the trade mark ‘SPA’ is ranked as the seventh most valuable Belgian trade mark, with a turnover of EUR 185 million (La Libre Belgique, dated 20/12/2005). Another article mentions that ‘SPA’ is the leader on the water market with a 20.69 % share (L’Echo, dated 17/01/2003). An independent survey cites ‘SPA’ as the seventh most trusted soft drink brand in Belgium and the Netherlands between 2003 and 2005 (Reader’s Digest Trusted Brands survey). Extracts from the website www.wherebrandsbecomestars.com/The-Brand-Rankings, printed on 29/04/2010, shows the trade mark ‘SPA’ in 22nd place for the years 2008‑2009. Another article concerning an opinion poll conducted by Akkanto shows that ‘Spa Monopole’ is the Belgian company with the second-best reputation among the top 10 Belgian companies in 2012 (Entreprendre Today, dated 25/04/2012). Another article mentions that ‘SPA’ has approximately a 30 % market share of the large retailers of bottled water in the Netherlands, and that in Belgium, the group has approximately a 20 % market share of all food and beverage sectors (La Libre Belgique, dated 30/11/2016). Another article covering a study by Ipsos ranks ‘SPA’ in 16th place in 2015 (Le Soir, dated 27/03/2015 and Knack Data News.be, dated 27/03/2015). Finally, another article regarding the Havas Media ‘Meaningful Brands’ study ranks ‘SPA’ in the top three on the Belgian market (L’Echo, dated 31/03/2015).

In particular, the sales figures and the global advertising budget featuring the earlier trade mark from 1990 to 2016 (some of which, for reasons of confidentiality and as requested by the opponent, cannot be revealed in this decision) are very impressive. Although the figures appear for instance in the affidavit signed by Mr MdB, Director of S.A. Spa Monopole N.V., these figures are corroborated by the opponent’s annual reports and by the extracts from the magazine Trends Top, relating to the ranking of the top 5 000 largest companies in Belgium according to financial results. This showed that the opponent is ranked in 3rd place in the beverages sector from 2011-2014 and in 5th place from 2015-2016, with turnover figures of EUR 121 776 000 (2011), EUR 122 280 000 (2012), EUR 123 004 000 (2013) and EUR 133 959 000 (2014).

Therefore, the reputation of the trade mark ‘SPA’ is beyond doubt. 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 a very substantial amount of bottled water. It is, therefore, reasonable that the trade mark in question must have come to the attention of a large number of consumers in Benelux. It shows unequivocally that the mark enjoys a high degree of recognition amongst the relevant public.

Judgments of the General Court acknowledge a high degree of reputation of the mark ‘SPA’ for mineral waters (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 (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215), 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 (02/03/2009, R 1231/2005‑4 and R 1250/2005‑4, WINE SPA / SPA et al., § 34; 26/04/2012, R 264/2011‑4, SPA SERENITY / SPA et al., § 51; 26/10/2012, R 2157/2011‑4, VICHY SPA / SPA (fig.) et al., § 36).

Furthermore, the reputation of the earlier mark ‘SPA’ for goods in Class 32 has also been confirmed by the General Court (05/05/2015, T‑131/12, SPARITUAL / SPA et al., EU:T:2015:257, § 44) and by the Boards of Appeal (29/04/2013, R 1594/2012‑4, ARETÉ SPA / SPA et al., § 36; 14/02/2013, R 2186/2010‑2, SENSORI SPA / SPA et al, § 38; 06/07/2015, R 2334/2013‑4, OLIOSPA / SPA et al., § 37; 16/01/2014, R 1516/2012‑4, SPA WISDOM / SPA et al.). 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.

(06/07/2015, R 2334/2013‑4, OLIOSPA / SPA et al.).

Therefore, the earlier mark ‘SPA’ has obtained a strong reputation in Benelux, at least for mineral and aerated waters in Class 32.

For reasons of procedural economy, the Opposition Division will not analyse the evidence for the remaining goods in Class 32 for which the opponent also claimed a reputation. The examination will continue on the assumption that the earlier mark has also proven the same strong degree of reputation for the remaining goods in Class 32, namely for other non-alcoholic drinks; syrups and other preparations for making beverages.

b) The signs

The signs have already been compared above under the ground of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The marks are visually and aurally similar to a very low degree and conceptually not similar.

c) The ‘link’ between the signs

The earlier mark is reputed for at least mineral and aerated waters and is assumed to have reputation for other non-alcoholic drinks; syrups and other preparations for making beverages in Class 32, and the signs are visually and aurally similar to a very low degree and conceptually they are not similar. 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 by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 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 opposition is directed against the following goods and services:

Class 32: Aloe vera drinks, non-alcoholic; aperitifs, non-alcoholic; barley wine [beer]; beer; beer wort; beer-based cocktails; carbonated water; preparations for making carbonated water; cider, non-alcoholic; cocktails, non-alcoholic; energy drinks; extracts of hops for making beer; fruit juices; fruit nectars, non-alcoholic; ginger beer; grape must, unfermented; isotonic beverages; kvass; lemonades; lithia water; malt beer; malt wort; mineral water [beverages]; must; non-alcoholic beverages; non-alcoholic beverages flavoured with coffee; non-alcoholic beverages flavoured with tea; non-alcoholic dried fruit beverages; non-alcoholic essences for making beverages; non-alcoholic fruit extracts; non-alcoholic fruit juice beverages; non-alcoholic honey-based beverages; non-alcoholic preparations for making beverages; orgeat; pastilles for effervescing beverages; powders for effervescing beverages; protein-enriched sports beverages; rice-based beverages, other than milk substitutes; sarsaparilla [non-alcoholic beverage]; seltzer water; shandy; sherbets [beverages]; smoothies; soda water; soft drinks; soya-based beverages, other than milk substitutes; syrups for beverages; syrups for lemonade; table waters; tomato juice [beverage]; vegetable juices [beverages]; waters [beverages]; whey beverages.

Class 33: Anise [liqueur]; anisette [liqueur]; aperitifs; arrack [arak]; alcoholic beverages containing fruit; alcoholic beverages, except beer; baijiu [Chinese distilled alcoholic beverage]; bitters; brandy; cider; cocktails; curacao; digesters [liqueurs and spirits]; distilled beverages; alcoholic essences; alcoholic extracts; fruit extracts, alcoholic; gin; grain-based distilled alcoholic beverages; hydromel [mead]; kirsch; liqueurs; peppermint liqueurs; perry; piquette; pre-mixed alcoholic beverages, other than beer-based; rice alcohol; rum; sake; spirits [beverages]; sugarcane-based alcoholic beverages; vodka; whisky; wine.

Class 35: Provision of an online marketplace for buyers and sellers of goods and services; presentation of goods on communication media, for retail purposes.

The Court established (12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146, § 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 contested 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 minds of the public, the use of the contested mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. 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 (12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146, § 45).

The Opposition Division is of the opinion that the coincidences between the signs ‘SPA’ and are too vague and that there are important differences between them, explained above under Likelihood of confusion, section c) The Signs, and section e) Global Assessment, that make it unlikely that the earlier mark would come to consumers’ minds when they see the contested sign on the contested goods and services in Classes 32, 33 and 35. This is despite the identity of some of the goods and services, thus making the goods and services labelled with the contested sign more attractive to consumers.

It is significant that the marks have so many visual, aural and conceptual differences and that the verbal element ‘SPA’ will not be separated out in the contested sign, even taking into account the strong reputation of the earlier mark. Therefore, it is a big step to say that consumers will be likely to associate the contested sign with the earlier mark even for those goods that are identical or similar to those for which the opponent has proven some reputation, (e.g. the contested goods in Class 32). When the marks are placed side by side, the initial reaction is to wonder where any similarity is supposed to reside, such are the contrasts between the marks. In these circumstances, it is unlikely that the earlier mark would come to the consumers’ minds when they see the contested sign. It is very unlikely that, when purchasing the goods and services under the contested sign, it would remind the consumer of the earlier mark, reputed for mineral and aerated waters in Class 32 and assumed to be reputed for the remaining goods in Class 32.

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 contested mark and the earlier, reputed mark. Due to the significant visual and aural differences between the marks, but also the conceptual differences, the Opposition Division is not persuaded that consumers will make the necessary connection in this case.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as it is based also on this ground.

Even assuming that the earlier mark is reputed for other non-alcoholic drinks; syrups and other preparations for making beverages, the outcome of no link remains the same. Therefore, it is not necessary to examine the evidence of reputation for these goods.

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Chantal VAN RIEL

Helen Louise MOSBACK

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.