Case T‑131/12

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 registration of the word mark SPARITUAL — Earlier Benelux figurative and word marks SPA and LES THERMES DE SPA — Relative ground for refusal — Article 8(5) of Regulation (EC) No 207/2009’

Summary — Judgment of the General Court (Second Chamber), 5 May 2015

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Taking unfair advantage of the distinctive character or repute of the earlier mark — Detriment to the distinctive character or repute of the earlier mark

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Reputation of the mark in the Member State or in the Community — Use of a trade mark as part of another trade mark and reputation

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 enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Reputation of the mark in the Member State or in the Community — Concept — Criteria for assessment

Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to 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 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. As far as trade marks registered at the Benelux Trade Mark Office are concerned, the Benelux territory must be treated like the territory of a Member State. For the same reasons as those relating to the condition as to the existence of a reputation in a Member State, a Benelux trade mark cannot therefore be required to have a reputation throughout the Benelux territory. It is sufficient for a Benelux trade mark to have a reputation in a substantial part of the Benelux territory, which may consist of a part of one of the Benelux countries. (see paras 19-21)

See the text of the decision. (see paras 22-24)

A mark’s acquisition of distinctive character may also occur as a result of its use as part of another registered trade mark. In such a scenario, in order for the distinctive character to be transferred from one registered mark to another which forms a part of the first mark, the relevant public must continue to perceive the goods at issue as originating from a particular undertaking. Therefore, the proprietor of a registered mark may, in order to make out proof of the particular distinctive character and reputation of that mark, rely on evidence of its use in a different form, as part of another registered mark and reputation, provided that the relevant public continues to perceive the goods at issue as originating from the same undertaking. (see paras 32, 33)

See the text of the decision. (see paras 35, 42-44, 58-62)

The infringements referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the conflicting signs, by virtue of which the relevant public makes a connection between those signs, even though it does not confuse them. The existence of such a connection 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 public, the strength of the earlier mark’s reputation and the existence of a likelihood of confusion on the part of the public. (see para. 48)

The concept of taking unfair advantage of the distinctive character or the reputation of the trade mark, also referred to as ‘free-riding’, relates not to the detriment caused to the earlier mark but to the advantage taken by the third party as a result of the use without due cause of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation. The more strongly and immediately the later mark is reminiscent of the earlier mark, the greater the likelihood that current or future use of the later mark will take unfair advantage from the distinctiveness or repute of the earlier mark, or cause harm thereto. Moreover, the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it. It is possible, particularly in the case of an opposition based on a mark with an exceptionally high reputation, that the probability of a future, non-hypothetical risk of detriment or of unfair advantage being taken by the mark applied for will be so obvious that the opposing party does not need to put forward and prove any other fact to that end. Moreover, the proprietor of the earlier mark is not required to demonstrate actual and present harm to his mark. He merely has to adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment. (see paras 51, 52)