Case T-438/07: Action brought on 30 November 2007 — Spa Monopole v OHIM — De Francesco Import (SpagO)
Date: 2007-11-30
Institutions: Court of First Instance
Subjects: EU trade mark, European Union Intellectual Property Office, action for annulment (EU), alcoholic beverage, non-alcoholic beverage, trade-mark law

C 37/26

EN

Official Journal of the European Union

9.2.2008

Pleas in law and main arguments

Community trade mark concerned: The word mark ‘NEW LOOK’
for goods and services in classes 3, 9, 14, 16, 18, 25, 26 and
35 — application No 2 932 606

Decision of the examiner: Refusal of the application

Decision of the Board of Appeal: Dismissal of the appeal

Pleas in law: Infringement of Article 7(3) of Council Regulation
No 40/94, as the Board of Appeal i) erred in requiring the appli-
cant to demonstrate acquired distinctive character in a Member
State other than the United Kingdom and Ireland; ii) erred in
holding that the applicant's evidence of use of ‘NEW LOOK’ in
stylised form or together with a distinctive device was incapable
of imbuing the mark with distinctive character; and iii) failed to
place sufficient overall weight on the applicant's evidence of use
in the United Kingdom and Ireland.

Action brought on 30 November 2007 — Spa Monopole v
OHIM — De Francesco Import (SpagO)

(Case T-438/07)

(2008/C 37/41)

Proprietor of the mark or sign cited in the opposition proceedings: The
applicant

Mark or sign cited: The Community, national and international
word and figurative marks ‘SPA’, ‘SPA Citron’ and ‘SPA Orange’
for goods in class 32

Decision of
entirety

the Opposition Division: Opposition upheld in its

Decision of the Board of Appeal: Annulment of the Opposition
Division's decision and rejection of the opposition

Pleas in law: Infringement of Article 8(5) of Council Regulation
No 40/94, as the Board of Appeal underestimated the reputa-
tion of SPA in the Benelux and did not take the following
factors sufficiently into account:

— the oral and visual similarities of the trade marks in ques-

tion;

— the fact that the use of the trade mark ‘SpagO’ for alcoholic
beverages would be detrimental to the reputation of the
mineral water ‘SPA’, which built its reputation on its high
quality, purity and beneficial effects upon health;

— the fact that the use of ‘SpagO’ for beverages would take
unfair advantage of the reputation of the trade mark ‘SPA’
and its image of quality and purity.

Language in which the application was lodged: English

Action brought on 4 December 2007 — Coats Holdings v
Commission

Parties

Applicant: Spa Monopole, compagnie fermière de Spa SA/NV
(Spa, Belgium) (represented by: L. de Brouwer, E. Cornu, E. De
Gryse and D. Moreau, lawyers)

Defendant: Office for Harmonisation in the Internal Market
(Trade Marks and Designs)

(Case T-439/07)

(2008/C 37/42)

Language of the case: English

Other party
De Francesco Import GmbH (Nürnberg, Germany)

to the proceedings before

the Board of Appeal:

Form of order sought

— Annul the decision of the Second Board of Appeal of the
Office of 13 September 2007 in Case R 1285/2006-2 and

Parties

Applicant: Coats Holdings Ltd (represented by: W. Sibree and C.
Jeffs, Solicitors)

Defendant: Commission of the European Communities

— order the Office to bear the costs.

Form of order sought

Pleas in law and main arguments

— Annul Articles 1(4) and 2(4) of the decision insofar as they

relate to Coats;

Applicant
GmbH

for the Community trade mark: De Francesco Import

— in the alternative, annul or reduce the fine imposed on

Coats by Article 2(4) of the decision; and

Community trade mark concerned: The word mark ‘SpagO’
goods in class 33 — application No 2 320 844

for

— order the Commission to bear its own costs and those

incurred by Coats.