OPPOSITION No B 2 438 995

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 Simont Braun, Avenue Louise 149 (bte 20), 1050 Bruxelles, Belgium (professional representative)

a g a i n s t

The Body Shop International Plc., Watersmead, Business Park, Littlehampton, West Sussex BN17 6LS, United Kingdom (applicant), represented by Stibbe, Central Plaza,

Rue de Loxum, 25, 1000 Bruxelles, Belgium (professional representative).

On 04/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 438 995 is upheld for all the contested goods.

2. Community trade mark application No 13 050 505 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 050 505. The opposition is based on, inter alia, Benelux trade mark registration No 372 307, in relation to which the opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

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

1. The goods

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

Class 3: perfumery, essential oils, cosmetics.

The contested goods are the following:

Class 3: Cosmetics; make-up preparations; skin care preparations; body cream; body milk; moisturising body lotion [cosmetic]; facial moisturisers [cosmetic].

Contested goods in Class 3

The contested cosmetics are identically contained in both lists of goods.

The contested make-up preparations; skin care preparations; body cream; body milk; moisturising body lotion [cosmetic]; facial moisturisers [cosmetic] are included in the broad category of the opponent’s cosmetics. Therefore, they are considered identical.

2. The signs

SPA
Earlier trade mark	Contested sign

The relevant territories are the Benelux countries.

The earlier mark is a word mark consisting of the word ‘SPA’. The contested sign is a figurative mark consisting of the words ‘SPA OF THE WORLD’ in a slightly fancy typeface in capital letters. On the left appears a circle with an opening on the top and inside the words ‘THE BODY SHOP’ written one word above the other, also in a slightly fancy typeface in capital letters.

Visually, the signs are similar to the extent that they coincide in the word ‘SPA’, meaning that the whole earlier mark is included in the contested sign. However, they differ in the additional elements ‘OF THE WORLD’, ‘THE BODY SHOP’ and the figurative element, as described above, of the contested sign.

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 word /SPA/ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the elements /OF/ /THE/ /WORLD/ and /THE/ /BO-DY/ /SHOP/ of the contested sign, which have no counterparts in the earlier mark.

Conceptually, the earlier mark ‘SPA’ refers to the name of a Belgian town famed for its water and may also denote a reference to hydrotherapy such as hammams or saunas (see judgment of 12/11/2009, T-438/07, ‘SpagO’; 19/06/2008, T-93/06, ‘Mineral Spa’; 25/05/2005, T-67/04, ‘Spa-Finders’; judgment of 25/03/2009, T-109/07, ‘Spa Therapy’ and judgment of 25/03/2009, T-21/07, ‘Spaline’). It is a common word that designates any commercial establishment which offers health and beauty treatments, massages, saunas, etc (see Le Gran Robert de la langue francaise dictionary which refers to SPA as indicating a ‘station thermale’ and quotes as an example ‘Le moindre hôtel s'enorgueillit d’un spa …’ (Le Monde, 30/09/200, p. 2) which translates as ‘Even the least of Hotels boasts a spa’). In the latter context, a ‘Spa’ is synonymous with a wellness centre. The contested sign is composed of a couple of elements: the word ‘SPA’ has the same meaning as explained above, the words ‘OF’, ’THE’ and ‘WORLD’, even though they are English words, they belong to the basic English vocabulary and are perceived as such by all the Benelux consumers. They have the following meanings: ‘used to indicate possession, origin, or association’ (OF), ‘used preceding a noun that has been previously specified’ (THE) and ‘the earth as a plant, especially including its inhabitants; mankind, the human race; the public; the universe or cosmos’ (WORLD). The same is applicable to the words ‘THE BODY SHOP’ having the following meanings: ‘used preceding a noun that has been previously specified’ (THE) ‘the entire physical structure of an animal or human being’ (BODY) and ‘a place, especially a small building, for the retail sale of goods and services’ (SHOP) (see Collins English dictionary online). It follows that, as both signs contain the word ‘SPA’, they convey a similar concept (that of SPA, either a city in Belgium, or a reference to hydrotherapy) and the marks are conceptually similar to this extent.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements, as it consists of merely one element.

The elements ‘THE BODY SHOP’ of the contested sign, as explained above in the conceptual comparison of the marks, will be associated with a shop where beauty/body care products are found. Bearing in mind that the relevant goods are beauty/body care preparations, namely those in Class 3, it is considered that these elements are weak for these goods. The public understands the meaning of these elements and will not pay as much attention to these weak elements as to the other more distinctive element(s) of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

The elements ‘SPA OF THE WORLD’ of the contested sign suggest that there is only one ‘SPA’ that is above or superior to all others or chosen in preference to all others. Bearing in mind the relevant goods, namely those in Class 3, it is considered that the elements ‘OF THE WORLD’ are laudatory for these goods and, therefore, they have a reduced distinctive character.

The earlier mark has no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

The elements ‘SPA OF THE WORLD’ in the contested sign are more dominant, because of their size and central position in the mark when compared to the remaining figurative element including the words ‘THE BODY SHOP’ in smaller letters, which is rather small and placed at the upper left side of the mark.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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.

The applicant points out, in its arguments of 13/06/2015, that when confronted with the contested sign, the relevant public ‘will not perceive the word ‘spa’ as a reference to Spa Monopole’s trade marks, but rather as a descriptive element referring to the idea of wellness, beauty and relaxation. The relevant Benelux public will understand the presence of the word ‘SPA’ to mean that The Body Shop’s products marketed under that mark can be used in connection with ‘spa treatments’ and to recreate at home the atmosphere of a spa. Indeed, the Benelux consumer is used to seeing the word ‘SPA’ on and in relation to products for the bath and the shower, lotions and other cosmetic products. This term is indeed commonly used in the Benelux to convey the idea of wellness, beauty and relaxation. This is particularly the case in relation to ‘home spa’ concept, which has become very popular in the Benelux.’

However, the Opposition Division points out that while it is true that the word ‘SPA’ is generic, it is generic for services in Class 44, but not for the goods in Class 3; the earlier mark ‘SPA’ is perfectly distinctive for the goods in Class 3. 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 (judgment of 25/03/2009, T-109/07, ‘SPA Therapy’, paragraphs 24, 28; judgment of 25/03/2009, T-21/07, ‘Spaline’, paragraph 31; judgement of 27/02/2015, T-377/12, ‘OLEOSPA’, paragraph 42; judgment of 17/03/2015, T-611/11, ‘MANEA SPA’), where the term was considered distinctive for cosmetic products. Furthermore, and according to the opponent in its observations, the term has also be considered distinctive according to a decision taken on 03/02/2011 by the Brussels Commercial Court, confirming the validity of the trade mark ‘SPA’ to designate cosmetics in the Benelux countries. The word ‘SPA’, used in the context of cosmetic products is only descriptive and generic of one of the places in which cosmetic products are used or marketed, places for hydrotherapy such as hammams and saunas, but from this cannot be inferred that the word is descriptive or generic with respect to cosmetic products.

Furthermore, as also confirmed by the Boards of Appeal in Decision of 16/01/2014, R 1516/2012-4, ‘SPA WISDOM’, paragraphs 39-42, involving the same parties and goods in Class 3, there is stated the following: ‘The element ‘SPA’ in the contested mark is not descriptive or weakly distinctive for the cosmetic products applied for…The main part of the evidence filed by the applicant shows the common use of the word ‘spa’ for commercial establishments offering health and wellness services based on hydrotherapy or relates to products which are not cosmetics (such as Jacuzzis, baths, bathroom accessories, candles)…the level of distinctiveness of the word ‘SPA’ in the contested mark must be assessed only in relation to the cosmetic products applied for and not in relation to any other goods and services. The applicant argues that there is a link between the health and wellness services for which the word ‘spa’ is descriptive and generic and cosmetic products, also because reputed cosmetic brands would have opened their own spas in the Benelux and because spa establishments would use or market cosmetic products. Irrespective of whether or not this is correct, from such as a possible link it cannot be deduced that the word ‘SPA’ is devoid of distinctive character for cosmetics.’

The opponent, in its observations of 24/03/2015, also mentions several decisions where the Boards of Appeal have acknowledged the verbal element ‘SPA’ as having a normal distinctive character to designate cosmetics in Class 3 (decision of 14/02/2013, R 2186/2010-2, ‘SENSORI SPA’, paragraph 10; decision of 29/04/2013, R 1594/2012-4, ‘ARETE SPA’, paragraph 44).

Therefore, the earlier mark ‘SPA’ has a normal degree of distinctiveness.

5. 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 are directed at the public at large. The degree of attention will be average.

6. 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.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).

The goods at issue have been found to be identical and the level of attention is average.

The conflicting signs are similar to the extent that they coincide in the word ‘SPA’, which constitutes the only element of the earlier mark, having a normal degree of distinctiveness, and being entirely included in the contested sign forming, together with the words ‘OF THE WORLD’, the most dominant elements, but also it is the most distinctive element, since the words ‘OF THE WORLD’ are laudatory, as explained above. Furthermore, the term ‘SPA’ in the contested sign will play a distinctive autonomous role within the sign, since it is separated from the elements ‘OF THE WORLD’, and even more from the remaining elements, since the latter are contained inside of a circular figurative element.

The signs differ in the fact that the contested sign is written in a slightly fancy typeface. However, the visual difference residing in the mark’s slightly fancy typeface must be considered not that significant, as it is quite common and fairly standard and minimal in character that it will not lead the consumer’s attention away from the words it seems to embellish.

The Court of Justice confirms that when a sign consists 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, 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 (judgment of 14/07/2005, T-312/03, ‘Selenium-Ace’, paragraph 37; decision of 19/12/2011, R 0233/2011-4 – ‘Best Tone’, paragraph 24; decision of 13/12/2011, R 0053/2011-5 – ‘Jumbo’, paragraph 59). This is also applicable in the present case regarding the figurative element of an open circle in the contested sign.

The signs differ, inter alia, in the elements ‘THE BODY SHOP’ of the contested sign. However, these elements together have less impact on the overall impression of the marks, because of their weak character for the goods in Class 3, but also because these words are slightly smaller and will get less attention by the consumers, also due to their position. The same is applicable to the words ‘OF THE WORLD’ that are laudatory and, thus, have a reduced distinctiveness.

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 (see judgment of 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, paragraph 26).

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

It is very likely that the consumer in the relevant territory will consider the conflicting marks as having the same commercial origin, for example, that the contested sign with its additional elements represent a new line or a parallel line of the opponent’s products (see judgment of 05/09/2007, T-220/06, ‘JAKO-O Möbel und Spielmittel für die junge Familie GmbH’). In the field of cosmetic products, for example, it is not unusual that manufacturers frequently put several lines of products on the market under different sub-brands.

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, in this case the identity of the goods offsets the lesser degree of similarity between the signs.

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 registration No 372 307. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, Benelux trade mark registration No 372 307 for ‘SPA’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) CTMR regarding Benelux trade mark registration No 389 230, in relation to which the opponent invoked Article 8(5) CTMR.

The applicant argues that its CTM has reputation and filed various pieces of evidence to substantiate this claim. The right to a CTM begins on the date when the CTM is filed and not before, and from that date on the CTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the CTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the CTM are irrelevant because the rights of the opponent, insofar as they predate the CTM, are earlier than the applicant’s CTM.

The applicant argues, furthermore, in its observations of 13/06/2015, that ‘Spa Monopole has failed to provide sufficient proof of use in the Benelux in the relevant period for the trade mark invoked under Article 8(1)(b) CTMR, namely Benelux registration No. 0372307 of the word mark “SPA”, registered for goods of Class 3…’. According to the Office’s Guidelines, Part C, Opposition, Proof of use, page 61, the applicant’s request has to be explicit and unambiguous. Mere observations or remarks by the applicant in respect of the (lack of) use of the opponent’s mark are not sufficiently explicit and do not constitute a valid request for proof of genuine use (judgment of 16/03/2005, T-112/03, ‘Flexi Air’. The same is applicable in the present case, since the request is not explicit and unambiguous and will not be taken into account as such.

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Saida CRABBE

Chantal VAN RIEL

Dorothee SCHLIEPHAKE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.