CELEX: 62004TJ0067
Community trade mark
Opposition proceedings
Application for Community word mark SPA-FINDERS
Earlier national word marks SPA and LES THERMES DE SPA
Article 8(5) of Regulation (EC) No 40/94

Background to the dispute
1       On 14 October 1996 the company Spa-Finders Travel Arrangements Ltd filed an application for a Community trade mark at 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 in respect of which registration was sought is the word sign SPA‑FINDERS.
3       The goods and services in respect of which registration was sought are in Classes 16 and 39 of the Nice Agreement concerning
the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised
and amended. These goods and services correspond to the following descriptions:
–       ‘printed publications including catalogues, magazines, newsletters’ in Class 16;
–       ‘travel agency services’, in Class 39.
4       On 19 January 1998, the trade mark application was published in
Community Trade Marks Bulletin
No 5/1998.
5       On 17 April 1998, Spa Monopole, compagnie fermière de Spa SA/NV, (hereinafter ‘Spa Monopole’ or ‘the applicant’), filed a
notice of opposition against the registration of the mark applied for.
6       The opposition was based on the earlier marks SPA and LES THERMES DE SPA, covered by the following registrations:
–       Benelux registration No 389 230 of the mark SPA, for the goods ‘mineral and aerated waters and other non-alcoholic drinks;
syrups and other preparations for making beverages’, in Class 32;
–       Benelux registration No 372 307 of the mark SPA, for the goods ‘bleaching preparations and other substances for laundry use;
cleaning, polishing, scouring and abrasive preparations; soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices’,
in Class 3;
–       German registration No 54 721 of the mark SPA, for goods and services in the abovementioned Class 3 and ‘lodging and boarding
services; public bath, swimming bath and sauna services; organisation of fairs and exhibitions; reservations of rooms’ in
Class 42;
–       Benelux registration No 501 661 of the mark LES THERMES DE SPA, for goods in Class 3.
7       The opposition filed by the applicant was also based on a non-registered sign, namely the company name and trade name SA Spa
Monopole, compagnie fermière de Spa, abbreviated as ‘SA Spa Monopole NV’, used in the course of trade in relation to mineral
waters and thermal institutes.
8       In support of its opposition, the applicant relied on Article 8(4) and (5) of Regulation No 40/94. The opposition was directed
against all the goods and services covered by the mark applied for.
9       By decision of 28 November 2002, the Opposition Division rejected the opposition, taking the view that it had not been demonstrated
that the use of the mark SPA-FINDERS would take unfair advantage of the repute of the earlier SPA trade marks or would be
detrimental to their distinctive character.
10     On 28 January 2003, the applicant filed notice of appeal against that decision at OHIM pursuant to Articles 57 to 59 of Regulation
No 40/94.
11     By decision of 10 December 2003 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal.
The Board of Appeal recognised the similarity of the marks in question and the extent of the repute of the mark SPA with regard
to mineral waters in Belgium and throughout the Benelux. However, the Board of Appeal found that it was not established that
registration of the mark SPA-FINDERS, applied to goods in Class 16 and services in Class 39, would be detrimental to the mark
SPA, within the meaning of Article 8(5) of Regulation No 40/94.

Forms of order sought
12     The applicant claims that the Court should:
–       annul the contested decision;
–       order OHIM to pay the costs.
13     OHIM contends that the Court should:
–       dismiss the present application;
–       order the applicant to pay the costs.

Law
14     In support of its application, the applicant puts forward a single plea in law alleging infringement of Article 8(5) of Regulation
No 40/94.

Arguments of the parties
Admissibility of the elements of fact and of law put forward before the Court
15     As a preliminary point, OHIM pleads the inadmissibility of the applicant’s arguments relating to the mark LES THERMES DE SPA,
registered in the Benelux under number 466 130 in respect of ‘thermal institution services including healthcare services;
baths, showers, massage’, in Class 42. OHIM submits in that connection that, since the opposition proceedings and the proceedings
before the OHIM Board of Appeal did not concern that mark, the applicant’s arguments relating to it are inadmissible.
16     At the hearing, the applicant confirmed that it had referred for the first time before the Court of First Instance to the
mark LES THERMES DE SPA, registered in the Benelux under number 466 130 in respect of services in Class 42.
Application of Article 8(5) of Regulation No 40/94
–       Reputation of the earlier marks
17     The applicant submits that the various SPA trade marks have a wide reputation in the Benelux, which stems, first, from the
exclusive right to exploit the waters of the town of Spa which it has enjoyed since 1921 and the fact that, under the trade
mark SPA, it has produced and marketed mineral waters from those springs. Second, the trade mark SPA is the leader for bottled
mineral waters on the Benelux market. Third, SPA is a mineral water with positive effects on health which have been recognised
by the Belgian Royal Medicine Academy. Finally, SPA bottled water is sold in a number of countries in Europe and around the
world. The applicant adds that the reputation which the trade mark SPA enjoys for mineral water in the Benelux was recognised
by the Opposition Division as well as by the Board of Appeal of OHIM in the contested decision and in another case (decision
of the Second Board of Appeal of 12 December 2003,
SA SPA Monopole, compagnie fermière de Spa
v
Cosmetics Limited
, Case R 168/2003-2).
18     The applicant asserts in addition that the trade mark LES THERMES DE SPA also has a wide reputation in the Benelux as regards
services in Class 42. It refers to the therapeutic properties of Spa water and of its thermal establishments which have been
famous since the 19th century, since when LES THERMES DE SPA has acquired an extremely wide reputation and attracts many tourists
and consumers.
19     OHIM submits that the mark SPA registered under number 389 230 relating to goods in Class 32 is the only one with a wide reputation
in the Benelux and must be the only mark taken into account in the present action.
–       Similarity or identity of the marks in question
20     The applicant does not dispute the Board of Appeal’s finding on the similarity of the marks SPA and SPA‑FINDERS. It also considers
that the marks LES THERMES DE SPA and SPA‑FINDERS are similar.
21     OHIM agrees with the applicant as regards the similarity of the marks SPA‑FINDERS and SPA. The Benelux public might, on account
of this similarity, establish a link between the sign and the mark, within the meaning of the judgment in
Adidas
(Case C-408/01
Adidas-Salomon and Adidas Benelux
[2003] ECR I-12537, ‘
Adidas
’). OHIM submits, however, that the existence of such a link does not of itself establish detriment to the repute or the distinctive
character of the earlier mark or that unfair advantage might be taken of it.
–       Method of assessing the condition laid down by Article 8(5), in fine, of Regulation No 40/94
22     The applicant relies on the case-law of the Court of Justice in relation to the application of 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) in order to argue that the important point is whether the public can establish a link between the earlier mark and the
mark applied for (
Adidas
, paragraphs 38 and 39). According to the applicant, the existence of this link would, first, be detrimental to the distinctive
character and the repute of the earlier mark and, second, enable the mark applied for to take unfair advantage of the repute
of the earlier mark. Spa Monopole adds that the greater the reputation of the earlier mark, the more detrimental the use of
a similar mark for different goods or services will be to the distinctive character or the repute of the earlier mark.
23     The applicant relies on the
Claeryn
judgment of the Benelux Court of Justice of 1 March 1975 according to which the distinctive character of a well-known trade
mark can be measured by its capacity to provoke, in the public’s mind, an immediate association with the product for which
it is registered. Finally, Spa Monopole emphasises the existence of a link in the public’s mind between the mark applied for
and the earlier mark, which will take unfair advantage of, and be detrimental to, the repute of the earlier mark. The public
will thus consider that an economic link exists between the undertakings offering the goods and services concerned.
24     OHIM rejects those arguments.
–       Application of the conditions laid down by Article 8(5) of Regulation No 40/94
25     As regards the application to the present case of the conditions laid down by Article 8(5) of Regulation No 40/94, the applicant
points out first of all that the trade mark SPA‑FINDERS concerns publications relating to health and beauty as well as travel
agency services in relation to thermal establishments in Europe. According to the applicant, since the trade mark SPA enjoys
an extensive reputation in the Benelux, the public in this region will immediately establish a link between SPA-FINDERS and
the mineral waters covered by the trade mark SPA as well as the thermal establishments using this water. Consequently, this
association between the mark SPA and the mark SPA-FINDERS relating to travel agency services and publications will be detrimental
to the distinctive character of the earlier mark by diluting it.
26     Spa Monopole next contends that by associating the marks SPA and SPA-FINDERS the public will think that an economic link exists
between the undertakings offering these goods and services. More specifically, the public might suppose that SPA-FINDERS travel
agency services are provided by Spa Monopole or are covered by a licence granted by it. Consequently, SPA-FINDERS will take
unfair advantage of the repute of the mark SPA. The applicant relies in this regard on the decision of the Second Board of
Appeal of OHIM of 12 December 2003, cited above (paragraph 28).
27     Spa Monopole also argues on the basis of the economic link which the public is likely to establish between the undertakings
offering SPA and SPA-FINDERS goods in order to demonstrate the risk of detriment to the repute of the mark SPA. The risk of
detriment would be real since Spa Monopole would not be able to control the quality of the goods and services sold under the
mark SPA‑FINDERS. In support of this argument, the applicant again refers to the decision of the Second Board of Appeal of
OHIM of 12 December 2003, cited above (paragraph 28).
28     OHIM submits that the applicant has not adduced any evidence to support the application of Article 8(5) of Regulation No 40/94.
OHIM emphasises that the work ‘spa’ is not known only because of mineral waters: it also evokes the town of Spa, its Formula
1 circuit and its countryside. The word ‘spa’ is also commonly used to designate aquatic equipment and treatments (hydrotherapy,
saunas, and so on). OHIM adds that the consumer will associate the mark SPA‑FINDERS with looking for places with the characteristics
of spas (hydrotherapy, hammams, saunas, and so on). Consequently there is nothing suspicious in using the word ‘spa’ in its
descriptive and generic meaning as long as this use makes no direct or indirect reference to mineral waters.

Findings of the Court
29     Article 8(5) of Regulation No 40/94 provides that ‘[f]urthermore, upon opposition by the proprietor of an earlier trade mark
within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar
to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier
trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community
and, 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 trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the earlier trade mark’.
30     In order to determine whether the Board of Appeal infringed that provision, it is necessary to assess whether the requirements
for its application are satisfied in the present case. In that connection, the Court notes that the earlier trade marks on
which the opposition is based are marks registered in the Benelux and a national mark. Accordingly, it must be determined,
first, whether the mark in respect of which registration is sought is identical with those earlier marks or is similar to
them; second, whether those marks have a reputation in the Benelux or in the Member State concerned; and, third, whether 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 marks. Since those conditions are cumulative, failure to satisfy one of them
is sufficient to render inapplicable the provisions of Article 8(5) of Regulation No 40/94.
31     Furthermore, the Court finds, as was confirmed at the hearing, that the notice of opposition filed by the applicant did not
refer to the mark LES THERMES DE SPA, registered in the Benelux under number 466 130 and relied on for the first time before
the Court. In accordance with settled case-law, facts which are pleaded before the Court without having previously been brought
before the departments of OHIM can affect the legality of 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 (Case T‑115/03
Samar
v
OHIM
–
Grotto
(GAS STATION)
[2004] ECR II-0000, paragraph 13).
32     Accordingly, the applicant’s arguments must be rejected in so far as they relate to the registration in the Benelux under
number 466 130 of the mark LES THERMES DE SPA and analysis must be confined to the SPA marks, registered under numbers 389 230,
372 307 and 54 721, and the mark LES THERMES DE SPA, registered under number 501 661.
Similarity or identity of the marks in question
33     The Court finds, first of all, that the parties rightly agree in acknowledging the similarity of the marks in question. The
outcome of the proceedings thus depends on the other two requirements laid down by Article 8(5) of Regulation No 40/94 (see
paragraph 30 above).
Reputation of the earlier marks
34     The Court notes next that, according to the case-law, in order to satisfy the requirement of reputation, the earlier national
mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (Case
C-375/97
General Motors
[1999] ECR I-5421, paragraph 31, and Case T-8/03
El Corte Inglés
v
OHIM
–
Pucci
(EMILIO PUCCI)
[2004] ECR II-0000, paragraph 67).
35     In the present case, it is common ground that the reputation of the mark SPA, registered in the Benelux under number 389 230,
in respect of goods in Class 32, is established in the Benelux.
36     By contrast, the applicant has not put forward any argument to support the conclusion that the mark SPA registered in the
Benelux under number 372 307, in respect of goods in Class 3, has a reputation in the Benelux.
37     Furthermore, the Court notes that the reputation in Germany of the mark SPA, registered in Germany under number 54 721 in
respect of goods and services in Classes 3 and 42, is not established. In that connection, the contested decision expressly
found that no evidence at all had been put forward by the applicant which made it possible to establish the reputation of
that mark in that territory. The applicant has not adduced before the Court any evidence to call in question the findings
of the Board of Appeal. The fact that bottles of SPA mineral water are sold in Germany does not of itself establish that the
mark SPA has a reputation in respect of the goods in question in Classes 3 and 42.
38     Finally, the Court finds that there is no evidence to support the conclusion that the mark LES THERMES DE SPA, registered
in the Benelux under number 501 661 in respect of goods in Class 3, has a reputation. In that connection, the applicant has
put forward only evidence relating to the reputation of the mark LES THERMES DE SPA in respect of goods and services in Class
42, on the basis of the operation of thermal establishments.
39     Accordingly, for the purposes of applying Article 8(5) of Regulation No 40/94 in the present case, the Court will take account
solely of the reputation, in the Benelux, of the mark SPA registered under number 389 230 which relates to goods in Class
32. It is therefore necessary to determine whether the use without due cause of the trade mark SPA-FINDERS would take unfair
advantage of, or be detrimental to, the distinctive character or the repute of the mark SPA registered in the Benelux under
number 389 230 which relates to goods in Class 32.
Unfair advantage taken of, and detriment to, the distinctive character or the repute of the earlier mark
40     The Court notes, as a preliminary point, that the purpose of Article 8(5) of Regulation No 40/94 is not to prevent registration
of any mark which is identical with a mark with a reputation or similar to it. The objective of that provision is, notably,
to enable the proprietor of an earlier national 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.
41     The Court notes, furthermore, that the existence of a link between the mark applied for and the earlier mark is an essential
condition for the application of Article 8(5) of Regulation No 40/94. The infringements referred to in that provision, where
they occur, are the consequence of a certain degree of similarity between the mark applied for and the earlier mark, by virtue
of which the public concerned makes a connection between them, that is, establishes a link between them. The existence of
such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see,
by analogy,
Adidas
, paragraphs 29 and 30). In that regard, the stronger the earlier mark’s distinctive character and reputation the easier it
will be to accept that detriment has been caused to it (
General Motors
, paragraph 30).
42     It is in the light of the foregoing considerations that the Court must determine whether the mark SPA-FINDERS is likely to
take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark SPA.
–       Detriment to the distinctive character of the earlier mark
43     There is detriment where the earlier mark is no longer capable of arousing immediate association with the goods for which
it is registered and used (see to that effect the Opinion of Advocate General Jacobs in
Adidas
, ECR I-12540, point 37).
44     In the present case, the Court finds that the applicant does not put forward any evidence to support the conclusion that there
is a risk of detriment to the distinctive character of the mark SPA by the use of the mark SPA‑FINDERS. The applicant stresses
the alleged immediate link which the public will establish between SPA and SPA‑FINDERS. It infers from that link that there
is detriment to the distinctive character. As the applicant acknowledged at the hearing, the existence of such a link is not
sufficient to demonstrate the risk of detriment to the distinctive character. The Court notes, moreover, that since the term
‘spa’ is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps
or, in general, places for hydrotherapy such as hammams or saunas, the risk of detriment to the distinctive character of the
mark SPA seems to be limited.
45     Therefore the applicant has not demonstrated that the use of the mark SPA‑FINDERS is likely to be detrimental to the distinctive
character of the mark SPA.
–       Detriment to the repute of the earlier mark
46     This detriment is made out where the goods for which the mark applied for is used appeal to the public’s senses in such a
way that the earlier mark’s power of attraction is diminished (see, to that effect, the Opinion of Advocate General Jacobs
in
Adidas
, point 38).
47     In the present case, the applicant has not adduced any evidence, during the proceedings before the departments of OHIM or
even before the Court, to establish that registration of the mark SPA-FINDERS would be likely to be detrimental to the repute
of the mark SPA.
48     In that regard, as OHIM rightly points out, there is no ‘antagonism’ between the goods and services covered by the marks SPA
and SPA-FINDERS which might be detrimental to the repute of SPA mineral waters. Similarly, the Court notes that it is unlikely
that the mark SPA-FINDERS will tarnish the image of the SPA mark.
49     The applicant’s argument based on the decision of the Second Board of Appeal of OHIM of 12 December 2003, cited above, does
not contradict that conclusion since, in that decision, the Board of Appeal of OHIM found, in point 28, that there was a risk
of detriment to repute and of unfair advantage linked to that repute by virtue of the proximity between the goods concerned.
In the present case, SPA and SPA‑FINDERS designate very different goods consisting, on the one hand, in mineral waters and,
on the other, in publications and travel agency services. The Court finds that it is therefore unlikely that the goods and
services covered by the mark SPA‑FINDERS, even if they turn out to be of lower quality, would diminish the power of attraction
of the mark SPA.
50     Consequently, the applicant has not demonstrated that the use of the mark SPA‑FINDERS is likely to be detrimental to the repute
of the mark SPA.
–       Unfair advantage taken of the distinctive character or the repute of the earlier mark
51     The concept of taking unfair advantage of the distinctive character or the repute of the earlier mark must be intended to
encompass instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade
upon its reputation (see to that effect Opinion of Advocate General Jacobs in
Adidas
, point 39).
52     In the present case, the Court finds that there is no evidence that the mark SPA‑FINDERS would enable its owner to take unfair
advantage of the distinctive character or the repute of the mark SPA. There is no evidence to support any risk of exploitation
and free-riding on the coattails of the mark SPA or of an attempt to trade upon its reputation.
53     Accordingly, it is not established that the mark applied for is likely to take unfair advantage of, or be detrimental to,
the distinctive character or the repute of the earlier mark. It is not therefore necessary for the Court to adjudicate on
whether there is a risk of use without due cause of the mark applied for.
54     Since one of the requirements necessary for the application of Article 8(5) of Regulation No 40/94 is not satisfied, the plea
alleging infringement of that provision is unfounded. Accordingly, the application must be dismissed.

Costs
55     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. Since the applicant has been unsuccessful, it
must be ordered to pay the costs in accordance with the form of order sought by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1.
Dismisses the application;
2.
Orders the applicant to pay the costs.
Pirrung
Forwood
Papasavvas
Delivered in open court in Luxembourg on 25 May 2005.
H. Jung

J. Pirrung
Registrar

President
*
Language of the case: English.