MINERAL SPA goes down the drain

In Mülhens GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-93/06, June 19 2008), the Court of First Instance (CFI) has dismissed an appeal against a decision of the Second Board of Appeal of OHIM in which the latter had held that use of the trademark MINERAL SPA would take unfair advantage of the reputation of the well-known trademark SPA.

In 2001 Mülhens GmbH & Co KG applied for the registration of MINERAL SPA as a Community trademark for goods in Class 3 of the Nice Classification ("soaps, perfumeries, essential oils, preparations for the body and beauty care, preparations for the hair, dentifrices").

On January 11 2002 Spa Monopole, compagnie fermière de Spa SA/NV opposed the application under Article 42 of the Community Trademark Regulation (40/94) in respect of all the goods covered by the application. The opposition was based on the word mark SPA, which is registered in Benelux for goods in Class 32 ("mineral water and aerated waters and other non-alcoholic beverages, syrups and other preparations to make beverages").

Spa Monopole based the notice of opposition on Article 8(5) of the regulation, which reads as follows:

“The trademark applied for shall not be registered where it is identical with or similar to the earlier trademark and is to be registered for goods or services which are not similar to those for which the earlier trademark is registered where, in the case of an earlier Community trademark, the trademark has a reputation in the Community and, in the case of an earlier national trademark, the trademark has a reputation in the member state concerned, and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.”

On August 18 2004 the Opposition Division of OHIM upheld the opposition on the grounds that the trademark would probably be detrimental to, or take unfair advantage of, the distinctive character or the repute of the earlier trademark SPA within the meaning of Article 8(5) of the regulation.

On September 15 2004 Mülhens appealed the decision, arguing that:

Spa Monopole had not proven the reputation of the earlier trademark SPA;
the trademarks MINERAL SPA and SPA were not similar, since the word ‘spa’ is descriptive in English; and
transfer of reputation was not possible between mineral water and cosmetic products.

The Second Board of Appeal dismissed the appeal on January 11 2006. The board held that the conflicting marks were similar within the meaning of Article 8(5) of the regulation and stated that:

the word ‘mineral’ was descriptive of some component of the goods covered by the trademark application; and
the word ‘spa’ could constitute the most distinctive element of the trademark applied for on account of the reputation of the earlier trademark SPA in the Benelux, where the SPA mark is now synonymous with mineral water.

Since the earlier trademark was included in the later one, the board held that the trademarks were sufficiently similar from a visual, aural and conceptual point of view for the average consumer to establish a link between them, despite the weak distinctive character of the word ‘spa’. Therefore, the board held that it was likely that consumers in the Benelux might associate the trademark applied for with the well-known trademark SPA. Even though cosmetics products were not similar to the goods covered by the earlier trademark, the difference between them was not found to be sufficiently great to prevent the general public from establishing a link between them. On account of that link, the board dismissed the application since Mülhens would take unfair advantage of the reputation of the original trademark.

On appeal to the CFI, Mülhens raised the following arguments:

The board did not take account of essential parts of its pleadings in the appeal.
The board did not specifically determine the reputation enjoyed by the earlier trademark. According to Mülhens, Article 8(5) applies only if the reputation of the earlier trademark is exceptional.
The general public would not associate the word ‘spa’ with the earlier trademark and its mineral water, since ‘spa’ refers to the Belgian town of Spa or to the Formula One circuit at Spa-Francorchamps.
The word 'spa' has acquired a generic meaning relating to health and wellness.
The word ‘spa’ is not distinctive and is in fact descriptive.
A transfer of the earlier mark’s reputation and image to the trademark applied for was not possible, since the goods at issue were very different and would not normally be sold together or at the same shops.

The CFI confirmed the board's decision, stating that:

the similarity and link between the two trademarks had been sufficiently established for Benelux consumers; and
the reputation of the earlier trademark was, “at the very least, very significant”.

Therefore, the CFI found that Mülhens’s use of the mark MINERAL SPA would take unfair advantage of the reputation of Spa Monopole's trademark. The appeal was thus dismissed.

This consistent application of Article 8(5) makes it clear that a trademark will be refused registration in the European Union if it takes unfair advantage of the reputation of an original mark, even if the two marks cover different goods. After a seven-year battle, Mülhens was given a clear reminder of the position of the EU institutions on the issue. Should Mülhens appeal to the European Court of Justice, it will be interesting to see if this steadfast reasoning continues.

Gillie Abbotts, Hammonds LLP, London

MINERAL SPA goes down the drain

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