Judgment — ECLI:EU:T:2009:434
Date: 2009-11-12
Language of the case: German
Court formation: Eighth Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Earlier trade mark which has a reputation
Procedure: Action for annulment - unfounded
Origin: Belgium

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)