Case T-109/07

L’Oréal SA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for the Community word mark SPA THERAPY – Earlier national word mark SPA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 8(1)(b))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94 Art. 8(1)(b))

1.      There is, for the average consumer, a likelihood of confusion between the word mark SPA THERAPY, in respect of which registration as a Community trade mark was sought for cosmetic products coming within Class 3 of the Nice Agreement, and the word mark SPA, which was registered previously with the Benelux Trade Mark Office with respect to identical goods.

The consumer generally pays greater attention to the beginning of a mark than to the end. The earlier mark is at the beginning of the mark applied for. Consequently, the independent distinctive role that it has within that mark is all the more likely to cause confusion among the relevant public as to the commercial origin of the goods.

The word ‘therapy’ is not a widely-known commercial name, but a term which, without being descriptive of cosmetic products, does not have a particularly strong distinctive character with respect to those goods, such that it could be understood as referring to the benefits of those goods.

Finally, cosmetics manufacturers frequently put several lines of products on the market under different sub-brands. Consequently, the fact that the mark applied for consists of the earlier mark SPA followed by the word ‘therapy’ could lead consumers to believe that it relates to a line of products marketed by the proprietor of the earlier mark.

Accordingly, the differences between the signs as a result of the presence of the word ‘therapy’ in the mark applied for are not such as to outweigh the significant similarities between the signs at issue resulting from the presence of the earlier mark at the beginning of the mark applied for and from the independent distinctive role that it has there, without, none the less, constituting the dominant element. Furthermore, since the goods covered by the marks at issue are identical, it must be concluded that the relevant public will believe that they come, at least, from economically-linked undertakings.

In such a context, the finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark.

(see paras 15, 19-20, 30-33)

2.      Beyond the usual case in which the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element, and that, therefore, the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from economically-linked undertakings, in which case the likelihood of confusion must be held to be established. In such a context, the finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark.

(see para. 19)