**Case T-438/07**

**Spa Monopole, compagnie fermière de Spa SA/NV**

**v**

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

(Community trade mark – Opposition proceedings – Application for Community word mark SpagO – Earlier national word mark SPA – Relative ground for refusal – No damage to reputation – Article 8(5) of Regulation (EC) No 40/94 (now Article 8(5) of Regulation (EC) No 207/2009))

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 – Protection
of well-known earlier mark extended to dissimilar goods or services – Conditions – Detriment to the distinctive character
or repute of the earlier mark – Taking unfair advantage of the distinctive character or repute of the earlier mark – Criteria
for assessment*

*(Council Regulation No 40/94, Art. 8(5))*

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 – Protection
of well-known earlier mark extended to dissimilar goods or services*

*(Council Regulation No 40/94, Art. 8(5))*

1.      The application of Article 8(5) of Regulation No 40/94 on the Community trade mark is subject to the following three 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 mark. Those three conditions are cumulative
and failure to satisfy one of them is sufficient to render that provision inapplicable.

The types of damage referred to in Article 8(5) of Regulation No 40/94, where they occur, are the consequence of a certain
degree of similarity between the marks at issue, by virtue of which the relevant section of the public makes a connection
between the marks, that is to say, it establishes a link between them, even though it does not confuse them.

The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the
case, in particular, the degree of similarity between the marks at issue; the nature of the goods or services for which the
marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant
section of the public; the strength of the earlier mark’s reputation and the existence of a likelihood of confusion on the
part of the public.

(see paras 14-16)

2.      The word sign SpagO, for which registration as a Community trade mark is sought for ‘alcoholic beverages (except beers)’ in
Class 33 of the Nice Agreement, is only slightly similar to the trade mark SPA, previously registered in Benelux in respect
of ‘mineral and aerated waters and other non‐alcoholic drinks; syrups and other preparations for making beverages’, in Class
32 of that agreement. That similarity is not sufficient for the relevant consumer to establish a link between the signs for
the purpose of Article 8(5) of Regulation No 40/94 on the Community trade mark.

Given that the signs at issue are short, the general public in the Benelux countries will concentrate on the word as a whole.
Given that the sign of the mark applied for is small and simple in structure, it is unlikely that the average consumer will
break the sign SpagO down into two words – ‘spa’ and ‘go’.

Visually, the difference in the overall impression created by the mark applied for, on the one hand, and the shorter, earlier
mark, on the other, is due to the addition of the suffix ‘go’ in the mark applied for. Similarly, from the phonetic point
of view, while both the signs at issue begin with the element ‘spa’, it is possible, as a result of the addition of the element
‘go’ in the mark applied for, for a distinction to be made between them. In fact, the mark applied for will be pronounced
as a short word, without any significant pause between the syllables, and the syllable ‘spa’ of that word does not have any
autonomous function, but is closely linked to the second syllable ‘go’.

No conceptual comparison is possible. For the relevant public, the earlier mark refers to the town of Spa (Belgium), famous
for its mineral waters and thermal baths, the Belgian racing circuit of Spa-Francorchamps or its descriptive meaning of a
thermal spring, such as a hammam or sauna. On the other hand, the word ‘spago’ is an invented word, which has no meaning in
any of the official languages of the Benelux countries.

As regards the nature of the goods in question, it is possible as a result of the alcohol content of the beverages to distinguish
them from water and non‐alcoholic drinks. Such drinks have different characteristics. Whereas alcoholic drinks are usually
consumed on special and convivial occasions, water and non-alcoholic drinks are consumed on a daily basis. Moreover, the consumption
of water satisfies a vital need. The average consumer, deemed to be reasonably well informed and reasonably observant and
circumspect, is aware of that distinction between alcoholic and non‐alcoholic drinks, which is, moreover, necessary, since
some consumers do not wish to or cannot consume alcohol. Furthermore, the price of alcoholic drinks is generally much higher
than that of non‐alcoholic drinks and the marketing of alcohol is, in a number of respects, more regulated, it being necessary,
inter alia, to obtain a licence to sell alcohol and a minimum age restriction being imposed for the purchase of alcoholic
drinks.

Accordingly, in the light of the difference in the nature of the goods covered by the marks at issue, the element ‘spa’ in
the trade mark applied for – Spago – will not be perceived by the average consumer in the Benelux countries as referring to
the mineral waters marketed under the earlier mark.

(see paras 18, 21, 24, 26, 28-31)


JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)

12 November 2009 ([\*](#Footnote*))

(Community trade mark – Opposition proceedings – Application for Community word mark SpagO – Earlier national word mark SPA – Relative ground for refusal – No damage to reputation – Article 8(5) of Regulation (EC) No 40/94 (now Article 8(5) of Regulation (EC) No 207/2009))

In Case T‐438/07,

**Spa Monopole, compagnie fermière de Spa SA/NV,** established in Spa (Belgium), represented by L. De Brouwer, E. Cornu, É. De Gryse, D. Moreau, J. Pagenberg, A. von Mühlendahl
and S. Abel, lawyers,

applicant,

v

**Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),** represented by B. Schmidt, 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

**De Francesco Import GmbH,** established in Nuremberg (Germany), represented by D. Terheggen and H. Lindner, lawyers,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 September 2007 (Case R 1285/2006‐2), relating
to opposition proceedings between De Francesco Import GmbH and Spa Monopole, compagnie fermière de Spa SA/NV,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),

composed of M.E. Martins Ribeiro, President, S. Papasavvas and N. Wahl (Rapporteur), Judges,

Registrar: T. Weiler, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 30 November 2007,

having regard to the response of OHIM lodged at the Court Registry on 4 June 2008,

having regard to the response of the intervener lodged at the Court Registry on 20 May 2008,

further to the hearing on 25 March 2009,

gives the following

**Judgment**

**Background to the dispute**

1        On 27 July 2001, the intervener, De Francesco Import GmbH, filed an application for registration of 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 (replaced by Council Regulation (EC) No 207/2009
of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The trade mark for which registration was sought is the word sign SpagO.

3        The goods in respect of which registration was sought are in Class 33 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, and correspond
to the following description: ‘alcoholic beverages (except beers)’.

4        The Community trade mark application was published in *Community Trade Marks Bulletin* No 18/2002 of 4 March 2002.

5        On 4 June 2002, the applicant, Spa Monopole, compagnie fermière de Spa SA/NV, filed a notice of opposition, under Article 42
of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for in relation to
all the goods covered by the application.

6        The opposition was based on the earlier word mark SPA, registered at the Benelux Trade Marks Office in respect of ‘mineral
and aerated waters and other non‐alcoholic drinks; syrups and other preparations for making beverages’, in Class 32.

7        By decision of 28 July 2006, the Opposition Division of OHIM upheld the opposition based on Article 8(5) of Regulation No 40/94
(now Article 8(5) of Regulation No 207/2009). For reasons of economy of procedure, the Opposition Division confined its examination
of the opposition to the word mark SPA registered at the Benelux Trade Marks Office. The Opposition Division found that the
marks in question were sufficiently similar, given that they shared the element ‘spa’. As regards the alcoholic beverages
covered by the mark applied for, it considered that use of that mark could be detrimental to the repute of the earlier mark
due to the harmful effect alcohol can have on health.

8        On 28 September 2006, the intervener brought an appeal against the Opposition Division’s decision.

9        By decision of 13 September 2007 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the decision of the
Opposition Division. It considered that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation
No 40/94 (now Article 8(1)(b) of Regulation No 207/2009), since there was only a low degree of similarity, first, between
the goods in Class 32 and those in Class 33 and, second, between the marks at issue. As regards Article 8(5) of Regulation
No 40/94, the Board of Appeal repeated the findings of the Opposition Division, which acknowledged the reputation enjoyed
by the SPA trade mark in the Benelux countries in respect of mineral waters. However, the Board of Appeal found that there
was only a low degree of similarity between the marks at issue, that that similarity was not sufficient for the relevant section
of the public to establish a link between the marks and that use of the mark applied for would not be detrimental to the repute
of the earlier mark.

**Forms of order sought by the parties**

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

11      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

**Law**

12      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(5) of Regulation
No 40/94.

13      The applicant submits, in essence, that the Board of Appeal erred in finding that the similarity of the signs at issue was
not sufficient for the relevant consumer to establish a link between the marks and in concluding that use of the contested
mark for alcoholic drinks was not detrimental to the repute or the commercial potential of the earlier mark for mineral water.

14      The Court notes that it is apparent from the wording of Article 8(5) of Regulation No 40/94 that its application is subject
to the following three 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 mark. Those
three conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (Case
T‐67/04 *Spa Monopole* v *OHIM – Spa‐Finders Travel Arrangements (SPA-FINDERS)* [2005] ECR II‐1825, paragraph 30).

15      It should also be pointed out that, according to case‐law, the types of damage referred to in Article 8(5) of Regulation No 40/94,
where they occur, are the consequence of a certain degree of similarity between the marks at issue, by virtue of which the
relevant section of the public makes a connection between the marks, that is to say, it establishes a link between them, even
though it does not confuse them (see, by analogy, Case C‐252/07 *Intel Corporation* [2008] ECR I‐0000, paragraph 30 and the case‐law cited).

16      The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the
case, in particular, the degree of similarity between the marks at issue; the nature of the goods or services for which the
marks were registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant
section of the public; the strength of the earlier mark’s reputation and the existence of a likelihood of confusion on the
part of the public (see *Intel Corporation*, paragraphs 41 and 42 and the case‐law cited).

17      It is in the light of those considerations that it is necessary to assess whether the contested decision is lawful.

18      In the present case, the Board of Appeal was correct in stating, at paragraph 24 of the contested decision, that the relevant
public was the general public in the Benelux countries. In fact, both the goods covered by the earlier mark, which is registered
in the Benelux countries, and those covered by the trade mark applied for are everyday consumer goods.

19      With regard to the reputation of the earlier mark, it is common ground that that mark enjoys a reputation in the Benelux countries
for mineral waters.

20      As regards the requirement that the marks at issue must be identical or similar, in order for there to be a degree of similarity
there must be elements of visual, phonetic or conceptual similarity (Case C‐408/01 *Adidas-Salomon and Adidas Benelux* [2003] ECR I‐2537, paragraph 28).

21      In the present case, the Board of Appeal concluded, at paragraphs 44 and 45 of the contested decision, that, taking account
of the visual and phonetic similarities of the first three letters of the signs at issue and the visual and phonetic differences
introduced by the element ‘go’, there was a low degree of similarity between the signs. That similarity, it found, is not
sufficient for the relevant consumer to establish a link between the signs.

22      That conclusion must be upheld.

23      Admittedly, 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 – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR)* [2004] ECR II‐965, paragraph 81). However, that argument cannot hold in all cases (see judgment of 16 May 2007 in Case T‐158/05
*Trek Bicycle* v *OHIM – Audi (ALL TREK)*, not published in the ECR, paragraph 70 and the case‐law cited) and does not, in any event, cast doubt on the principle that
the assessment of the similarity of marks must take account of the overall impression created by them.

24      In the present case, given that the signs at issue are short, the relevant public will concentrate on the word as a whole.
It should be noted in that connection that, given that the sign of the mark applied for is small and simple in structure,
it is unlikely that the average consumer will break the sign SpagO down into two words – ‘spa’ and ‘go’.

25      Moreover, it is apparent from the documents before the Court that, in accordance with the last sentence of Rule 3(1) of Commission
Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, the mark
applied for is composed of the word element ‘spago’, with capital letters at the beginning and the end.

26      Visually, the difference in the overall impression created by the mark applied for, on the one hand, and the shorter, earlier
mark, on the other, is due to the addition of the suffix ‘go’ in the mark applied for. Similarly, from the phonetic point
of view, while both the signs at issue begin with the element ‘spa’, it is possible, as a result of the addition of the element
‘go’ in the mark applied for, for a distinction to be made between them. In fact, the mark applied for will be pronounced
as a short word, without any significant pause between the syllables, and the syllable ‘spa’ of that word does not have any
autonomous function, but is closely linked to the second syllable ‘go’.

27      Moreover, while both the signs at issue share the element ‘spa’, the mark applied for is a fanciful word for the relevant
section of the public.

28      In that connection, as the Board of Appeal correctly stated at paragraph 44 of the contested decision, no conceptual comparison
is possible. For the relevant public, the earlier mark refers to the town of Spa (Belgium), famous for its mineral waters
and thermal baths, the Belgian racing circuit of Spa-Francorchamps or its descriptive meaning of a thermal spring, such as
a hammam or sauna (*SPA-FINDERS*, paragraph 44). On the other hand, the word ‘spago’ is an invented word, which has no meaning in any of the official languages
of the Benelux countries.

29      The marks at issue are therefore only slightly similar.

30      Moreover, for the purpose of determining whether there is a link between the marks at issue, it is also necessary to take
account of the nature of the goods in question. It should be noted, first, that it is possible as a result of the alcohol
content of the beverages to distinguish them from water and non‐alcoholic drinks. Such drinks have different characteristics.
Whereas alcoholic drinks are usually consumed on special and convivial occasions, water and non-alcoholic drinks are consumed
on a daily basis. Moreover, the consumption of water satisfies a vital need. The average consumer, deemed to be reasonably
well informed and reasonably observant and circumspect, is aware of that distinction between alcoholic and non‐alcoholic drinks,
which is, moreover, necessary, since some consumers do not wish to or cannot consume alcohol. Furthermore, the price of alcoholic
drinks is generally much higher than that of non‐alcoholic drinks and the marketing of alcohol is, in a number of respects,
more regulated, it being necessary, inter alia, to obtain a licence to sell alcohol and a minimum age restriction being imposed
for the purchase of alcoholic drinks. The fact that the drinks at issue may be consumed in the same places and in a complementary
fashion, in that they can be mixed or served together, and that they are often consumed by the same people and sold at similar
points of sale does not affect this finding (see, to that effect, Case T‐296/02 *Lidl Stiftung* v *OHIM – REWE-Zentral (LINDENHOF)* [2005] ECR II‐563, paragraphs 54 to 57).

31      Accordingly, in the light of the difference in the nature of the goods covered by the marks at issue, the element ‘spa’ in
the trade mark applied for – Spago – will not be perceived by the average consumer in the Benelux countries as referring to
the mineral waters marketed under the earlier mark.

32      The parallel which the applicant draws with cases in which applications for registration were rejected due to the reputation
of the earlier mark is irrelevant.

33      First, as for the references to OHIM’s decision-making practice, suffice it to note that, according to settled case-law, the
legality of the decisions of Boards of Appeal must be assessed solely on the basis of Regulation No 40/94, as interpreted
by the Community judicature, and not on the basis of a previous decision-making practice of those boards (see Case T‐112/03
*L’Oréal* v *OHIM – Revlon (FLEXI AIR)* [2005] ECR II‐949, paragraph 68 and the case-law cited).

34      Second, the mark applied for in the present case is not SPA GO or SPA‐GO but SpagO – a single word. It should be observed
in that connection that the representation of the mark applied for differs from that of the marks relied on by the applicant
in its application, in which the element ‘spa’ is clearly separate, is in a dominant position and features alongside additional
elements which, on the whole, are purely descriptive. Accordingly, in the case which gave rise to the judgment of 19 June
2008 in Case T‐93/06 *Mülhens* v *OHIM – Spa Monopole (MINERAL SPA)*, not published in the ECR, paragraphs 29 to 39, the word ‘spa’ was separate from the first element and the word ‘mineral’
described the components of the goods in question, whereas in the present case, the word ‘spago’ is a neologism in which the
element ‘spa’ is lost in the overall impression created by the mark applied for.

35      For the same reason, the applicant’s argument that, since the earlier mark is reproduced in its entirety in the mark applied
for, the marks at issue should be regarded as similar cannot be accepted. In this instance, contrary to the applicant’s submissions,
the element ‘spa’ is not the dominant element of the mark applied for. Even if consumers do not remember that, in the mark
applied for, ‘s’ and ‘o’ are written as capital letters, the relevant section of the public will, as already stated above,
identify the sign SpagO as an invented word that has no meaning.

36      Although the applicant presents the earlier mark as a trade mark with a reputation, not to say a huge reputation, that does
not in any way alter the finding that, in the present case, there is only a low degree of visual and phonetic similarity between
that mark and the mark applied for. The criterion relating to reputation, which is well established, does not automatically
imply that there is a link between the marks at issue (*Intel Corporation*, paragraph 64).

37      The Board of Appeal was therefore correct in considering that, in spite of the highly distinctive character acquired over
time by the earlier mark, the similarities between the signs at issue were not sufficient for a link to be established between,
on the one hand, the mark applied for in respect of alcoholic drinks and, on the other, the earlier mark for mineral waters.

38      Given that one of the three cumulative conditions for the application of Article 8(5) of Regulation No 40/94 is not met, it
is unnecessary to examine whether one of the types of damage referred to in the third condition of that provision would occur.

39       It follows that the single plea in law, alleging infringement of Article 8(5) of Regulation No 40/94, is unfounded and that
the action must therefore be dismissed.

**Costs**

40      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 and the intervener.

On those grounds,

THE COURT OF FIRST INSTANCE (Eighth Chamber)

hereby:

1.      **Dismisses the action;**

2.      **Orders Spa Monopole, compagnie fermière de Spa SA/NV to pay the costs.**

| | | |
| --- | --- | --- |
| Martins Ribeiro | Papasavvas | Wahl |

Delivered in open court in Luxembourg on 12 November 2009.

[Signatures]

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[\*](#Footref*) Language of the case: German.