JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)
19 June 2008 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark MINERAL SPA – Earlier national word mark SPA – Relative ground for refusal – Reputation – Unfair advantage taken of the repute of the earlier mark – Article 8(5) of Regulation (EC) No 40/94)
In Case T‑93/06,
Mülhens GmbH & Co. KG, established in Cologne (Germany), represented by T. Schulte-Beckhausen and S. Maaßen, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Spa Monopole, compagnie fermière de Spa SA/NV, established in Spa (Belgium), represented by L. de Brouwer, É. Cornu, E. de Gryse and D. Moreau, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 January 2006 (Case R 825/2004-2) concerning opposition proceedings between Spa Monopole, compagnie fermière de Spa SA/NV, and Mülhens GmbH & Co. KG,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, N. Wahl (Rapporteur) and A. Dittrich, Judges,
Registrar: C. Kantza, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 23 March 2006,
having regard to the response of OHIM lodged at the Registry of the Court on 12 June 2006,
having regard to the response of the intervener lodged at the Registry of the Court on 29 June 2006,
further to the hearing on 5 December 2007,
gives the following
Judgment
Background to the dispute
1 On 13 February 2001, the applicant, Mülhens GmbH & Co. KG, filed a Community trade mark application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.
2 The trade mark for which registration was sought is the word sign MINERAL SPA.
3 The goods in respect of which registration was sought are in Class 3 under the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and have the following description: ‘Soaps, perfumeries, essential oils, preparations for body and beauty care, preparations for the hair, dentifrices’.
4 On 15 October 2001 the application was published in Community Trade Marks Bulletin No 90/2001.
5 On 11 January 2002 the intervener, Spa Monopole, compagnie fermière de Spa SA/NV, filed a notice of opposition under Article 42 of Regulation No 40/94 to registration of the trade mark applied for in respect of all the goods covered by that mark. It based its opposition, inter alia, on the word mark SPA registered with the Benelux Trade Mark Office under number 389230 in respect of the following goods: ‘Mineral water and aerated waters and other non-alcoholic beverages, syrups and other preparations to make beverages’ in Class 32. In support of the opposition it relied, inter alia, on Article 8(5) of Regulation No 40/94.
6 By decision of 18 August 2004, the Opposition Division upheld the opposition on the ground that the trade mark applied for would probably be detrimental to, or take unfair advantage of, the distinctive character or the repute of the earlier trade mark within the meaning of Article 8(5) of Regulation No 40/94.
7 On 15 September 2004 the applicant filed notice of appeal with OHIM against the decision of the Opposition Division. It claimed, first, that the intervener had not proven the reputation of the earlier trade mark. It also disputed that the conflicting marks were similar given that the word ‘spa’ is descriptive in English. Finally, it claimed that it is not possible to transfer reputation from mineral water to cosmetic products.
8 By decision of 11 January 2006 (‘the contested decision’) the Second Board of Appeal of OHIM dismissed the appeal.
9 In the light of the documents lodged by the intervener, the Board of Appeal decided that the relevant public was the general public, and that the earlier trade mark enjoyed a huge reputation in the Benelux for mineral water.
10 The Board of Appeal then stated that the conflicting marks were similar within the meaning of Article 8(5) of Regulation No 40/94. It held that the word ‘mineral’ was descriptive of some component of the goods covered by the trade mark application and that the word ‘spa’ could constitute the most distinctive element of the trade mark applied for, on account of the reputation of the earlier trade mark SPA in the Benelux, where that word has acquired a secondary meaning and a strong distinctive character in relation to mineral water and, by extension, with respect to goods having a certain nexus with mineral water. According to the Board of Appeal, since the earlier trade mark is included in the trade mark applied for, the conflicting marks are sufficiently similar visually, aurally and conceptually for the average consumer to establish a link between them, without, however, confusing them.
11 The Board of Appeal, in the contested decision, held that despite the weak distinctive character of the word ‘spa’, it is not unlikely that consumers in the Benelux might associate the trade mark applied for with the reputed trade mark SPA. Even though cosmetic products are not similar to the goods covered by the earlier trade mark, the difference between them is not sufficiently great to prevent the general public from establishing a link between them. On account of that link – the association between the two marks and the similarity of the goods in question – it is quite likely that the applicant will take unfair advantage of the repute and the consistent selling power of the earlier trade mark. Therefore, having regard to the lack of any evidence of due cause within the meaning of Article 8(5) of Regulation No 40/94, the Board of Appeal concluded that that provision applied and, accordingly, dismissed the appeal.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM and the intervener contend that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Admissibility of the documents contained in a number of the annexes to the application
Arguments of the parties
14 The intervener disputes the admissibility of the documents contained in Annexes 5 to 24 to the application, on the ground that they were provided for the first time before the Court. OHIM supported that position at the hearing.
15 The applicant claimed, at the hearing, that the documents contained in Annexes 5 to 24 to the application were admissible, since, although they were provided for the first time before the Court, they did not constitute new evidence and merely substantiated facts already provided before the Board of Appeal.
Findings of the Court
16 According to settled case-law, the purpose of actions brought before the Court of First Instance is to review the legality of decisions of the Boards of Appeal within the meaning of Article 63 of Regulation No 40/94. Facts which are pleaded before the Court without having previously been brought before the departments of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion. It follows from the concluding words of Article 74(1) of Regulation No 40/94, according to which, in proceedings relating to relative grounds for refusal of registration, OHIM is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, that OHIM is not required to take into account of its own motion facts which have not been put forward by the parties. Therefore, such facts cannot affect the legality of a decision of the Board of Appeal (see, to that effect, Case T‑115/03 Samar v OHIM – Grotto (GAS STATION) [2004] ECR II‑2939, paragraph 13).
17 In the present case, the applicant admitted at the hearing that the documents contained in Annexes 5 to 24 to the application had not been provided before OHIM.
18 Therefore, as the intervener claims, the documents contained in Annexes 5 to 24 to the application cannot be taken into consideration by the Court.
Substance
Arguments of the parties
19 The applicant makes, in essence, a single plea in law alleging infringement of Article 8(5) of Regulation No 40/94 in that the conditions for application of that provision are not met.
20 In the first place, the applicant claims that the Board of Appeal, in the contested decision, did not take account of essential parts of its pleadings and did not specifically determine the degree of reputation enjoyed by the earlier trade mark. According to the applicant, Article 8(5) of Regulation No 40/94 applies only if the reputation of the earlier trade mark is exceptional.
21 In the second place, the applicant argues that it is out of the question that the general public would associate the word ‘spa’ with the earlier trade mark and its mineral water. The word ‘spa’ refers, first and foremost, to the town of Spa (Belgium) and to mineral water having a healthy or healing effect. At the hearing, the applicant added that the word ‘spa’ also refers to the Formula One circuit at Spa-Francorchamps. The word ‘spa’ has also acquired a further generic meaning relating to health and wellness resorts (Case T‑67/04 Spa Monopole v OHIM – Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II‑1825). That third meaning has become the most important one. In addition, the applicant claims that in Dutch, French and English the word ‘spa’ is derived from Latin, as it is composed of the first letters of the three Latin words ‘sanus per aquam’. Since there is a basic knowledge of Latin in the Benelux, the general public will associate the word ‘spa’ with that Latin expression.
22 In the third place, according to the applicant, the aforementioned arguments demonstrate that the Board of Appeal was wrong to consider the conflicting marks to be similar. Since the word ‘spa’ has a descriptive character, it cannot be considered to be the distinctive element of the trade mark applied for. Therefore, according to the applicant, the public will focus its attention rather on the ‘mineral’ component or, at most, will split its attention equally between the two components ‘mineral’ and ‘spa’.
23 Lastly, the applicant claims that a transfer of the earlier mark’s reputation and image to the trade mark applied for is not possible in the present case. According to the applicant, the mineral water marketed by the intervener is not exclusive in any way and is not sold solely in specialist shops. At the hearing, the applicant maintained that the goods at issue were very different, since they were not normally produced by the same undertakings and they were not sold together or in the same shops. It also highlighted the fact that essential oils and perfumes do not carry the ‘mineral water’ label. Furthermore, a link between those different goods cannot be inferred from the fact that they all contain water, given that a vast number of goods, such as steel, contain water.
24 OHIM, supported by the intervener, disputes the arguments put forward by the applicant.
Findings of the Court
25 It is apparent from the wording of Article 8(5) of Regulation No 40/94 that its application is subject to the following conditions: first, that the marks at issue are identical or similar; secondly, that the earlier mark cited in opposition has a reputation and, thirdly, that there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (SPA-FINDERS, paragraph 30, and Case T‑215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 34).
26 In order better to define the risk referred to by Article 8(5) of Regulation No 40/94, it must be pointed out that the primary function of a mark is unquestionably that of an ‘indication of origin’ (see the seventh recital in the preamble to Regulation No 40/94). The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure, youth. To that effect the mark has an inherent economic value which is independent of and separate from that of the goods or services for which it is registered. The messages in question which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation No 40/94 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (VIPS, paragraph 35).
The similarity between the trade mark applied for and the earlier trade mark
27 According to the case-law, the harm referred to in Article 8(5) of Regulation No 40/94 is the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the public concerned makes a connection between them, that is, establishes a link between them, even though it does not confuse them. The existence of that link, which must be appreciated globally, taking into account all factors relevant to the circumstances of the case, is therefore an essential condition for the application of that provision (see, by analogy, as regards Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Case C‑408/01 Adidas-Salomon and Adidas Benelux [2003] ECR I‑12537, paragraphs 29, 30 and 38; see also VIPS, paragraph 47).
28 In the present case, the Board of Appeal, at paragraph 23 of the contested decision, correctly held that the relevant public was composed of the general public in the Benelux. Both the goods covered by the earlier trade mark, which is registered in the Benelux, and those covered by the trade mark applied for are everyday consumer items.
29 At paragraph 32 of the contested decision the Board of Appeal stated that the word ‘mineral’ is descriptive of some component of the goods in respect of which the trade mark application was made. It then stated that the word ‘spa’, which, for the average consumer in the Benelux, refers to the town of Spa and its well-known mineral springs, is of an inherently low distinctive character. The Board of Appeal nevertheless held that the word ‘spa’ may constitute the most distinctive element of the trade mark applied for, due to the reputation of the earlier trade mark SPA in the Benelux, where that word has acquired a secondary meaning and a strong distinctive character in relation to mineral water and, by extension, with respect to goods which have a certain nexus with mineral water. It concluded that, since the earlier trade mark is included in the trade mark applied for, the two marks are sufficiently similar visually, aurally and conceptually for the average consumer to establish a link between them for the purposes of Article 8(5) of Regulation No 40/94.
30 That finding is correct. The two marks have a degree of similarity at a visual and aural level since the word ‘spa’ is common to both. Although it is true that the consumer normally attaches more importance to the first part of words (Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – Gonzaléz Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81), it appears, in the present case, that the average consumer in the Benelux will focus his attention on the second component of the expression ‘mineral spa’ since the word ‘mineral’, as the Board of Appeal correctly points out at paragraph 32 of the contested decision, describes the components of the goods in question on account of the common use of minerals in the cosmetics sector.
31 Furthermore, the two marks are also relatively similar at a conceptual level. As was pointed out at paragraph 32 of the contested decision, the word ‘spa’ refers not only to the town of Spa, but also to the mineral water covered by the earlier trade mark on account of its long and extensive use to designate that mineral water, so that the average consumer in the Benelux will probably associate the mineral water marketed under the SPA trade mark with the word ‘spa’ contained in the trade mark applied for. The third meaning of the word ‘spa’ put forward by the applicant is supplementary and does not therefore prevail over the other meanings. As a consequence, the applicant’s argument, that the word ‘spa’ has also acquired a more important generic meaning, concerning health and wellness resorts, cannot cast doubt on the finding that the conflicting marks have a degree of similarity.
32 It follows from the foregoing considerations that a link between the two marks for the purposes of Article 8(5) of Regulation No 40/94 has been established.
The reputation of the earlier trade mark
33 According to case-law, in order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned for the goods or services covered by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, such as traders in a specific sector. In examining whether this condition is fulfilled, consideration must be given to all the relevant facts of the case, in particular the market share held by the earlier trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it, although it is not required that the mark be known by a given percentage of the public so defined or that its reputation extend throughout the territory in question, so long as the reputation exists in a substantial part of that territory (see, by analogy, as regards Article 5(2) of Directive 89/104, Case C‑375/97 General Motors [1999] ECR I‑5421, paragraphs 24, 25 and 27 to 29, and, with regard to Article 8(5) of Regulation No 40/94, Case T‑8/03 El Corte Inglés v OHIM – Pucci (EMILIO PUCCI) [2004] ECR II‑4297, paragraph 67).
34 The Board of Appeal states, at paragraph 26 of the contested decision, that the earlier trade mark enjoys a huge reputation in the Benelux for mineral water. As the Board of Appeal states at paragraph 24 of the contested decision, and the intervener points out in its response, the earlier trade mark has been used continuously in the Benelux for a number of years; SPA water is available throughout the territory of the Benelux with a strong presence in both mass and small-scale distribution; and Spa Monopole is the leader on the market for mineral water with a market share of 23.6%, has made significant advertising investments and sponsors a number of sports events. Those facts demonstrate that the earlier trade mark has a reputation, which is, at the very least, very significant in the Benelux for mineral water.
35 It follows that the applicant’s argument, that in the contested decision the Board of Appeal did not specifically determine the degree of reputation enjoyed by the earlier trade mark, is unfounded.
36 It results from the foregoing considerations that the reputation of the earlier trade mark in the Benelux for mineral water is, at the very least, very significant.
Unfair advantage and lack of due cause
37 It is necessary, in the present case, to determine whether the Board of Appeal’s assessment – that the applicant is quite likely to take unfair advantage, without due cause for use, of the repute of the earlier trade mark – is correct. The risk that the use without due cause of the mark applied for takes unfair advantage of the repute of the earlier mark is sufficient for Article 8(5) of Regulation No 40/94 to apply (see, to that effect, VIPS, paragraph 36).
38 That risk must be distinguished from the likelihood of confusion covered by Article 8(1)(b) of Regulation No 40/94, the existence of which is not a condition for the application of Article 8(5) of that regulation. The risk that the use without due cause of the mark applied for takes unfair advantage of the repute of the earlier trade mark continues to exist where the consumer, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and buys the product or service covered by it on the ground that it bears that mark, which is identical or similar to an earlier mark with a reputation (VIPS, paragraphs 41 and 42).
39 The purpose of Article 8(5) of Regulation No 40/94 is not to prevent the registration of any mark which is identical or similar to a mark with a reputation. The objective of that provision is, notably, to enable the proprietor of an earlier mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark or to take unfair advantage of that repute or distinctive character. In that connection, it should be made clear that the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He must however adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (SPA FINDERS, paragraph 40, and VIPS, paragraph 46).
40 The concept of the unfair advantage taken of the repute of the earlier mark by the use without due cause of the mark applied for concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (VIPS, paragraph 40).
41 The risk of such a transfer has been established in the present case. First, as was stated correctly at paragraph 40 of the contested decision, the relevant public for the trade mark applied for, that is to say the general public in the Benelux, may be the same as that targeted by the earlier trade mark.
42 Second, the goods covered by the trade mark applied for are not so different from those covered by the earlier trade mark. As the Board of Appeal points out at paragraph 40 of the contested decision, thermal waters, cosmetic products, soaps and essential oils can be used together for skin and beauty treatments. In addition, mineral waters and mineral salts can be used in the production of soaps, other cosmetic products and preparations for the hair. Furthermore, mineral water operators sometimes sell cosmetic products comprising mineral water.
43 Third, the image of the earlier trade mark and the message that it conveys relate to health, beauty, purity and richness in minerals. That image and that message can apply also to the goods in respect of which registration was sought by the applicant, since they are used to preserve and improve health or beauty. Therefore, the applicant could take unfair advantage of the image of the earlier trade mark and the message conveyed by it in that the goods covered by the trade mark applied for would be perceived by the relevant public as bringing health, beauty and purity. Accordingly, the risk of a free-riding transfer of the advertising effort made by the proprietor of the earlier mark to the mark applied for has been established.
44 In addition, the applicant’s argument based on the fact that water is present in a vast number of different goods cannot succeed. As OHIM submitted at the hearing, it is not a question of whether toothpaste and perfume contain mineral water, but whether the public may think that the goods concerned are produced from or with mineral water.
45 It follows that OHIM was justified in finding, in the contested decision, that it is likely that the applicant will take unfair advantage of the repute of the earlier trade mark. Consequently, the contested decision is not vitiated by error in that regard.
46 In the contested decision, the Board of Appeal found a lack of due cause within the meaning of Article 8(5) of Regulation No 40/94 and the applicant has not submitted any legal or factual evidence to cast doubt on that finding.
47 It follows from all of the foregoing that the single plea of the originating application cannot be upheld and therefore the action must be dismissed.
Costs
48 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Mülhens GmbH & Co. KG to pay the costs.
Martins Ribeiro | Wahl | Dittrich |
Delivered in open court in Luxembourg on 19 June 2008.
E. Coulon | | M.E. Martins Ribeiro |