SPA THERAPY held to be confusingly similar to SPA

European Union
In L'Oréal SA v Office for Harmonization in the Internal Market (OHIM) (Case T-109/07, March 25 2009), the Court of First Instance (CFI) has held that there was a likelihood of confusion between the trademark SPA THERAPY and the earlier registered trademark SPA.
L'Oréal SA applied for the registration of SPA THERAPY as a Community trademark for goods in Class 3 of the Nice Classification (cosmetics). SPA Monopole opposed the application based on its earlier registered trademark SPA for goods in Classes 3 and 32 (mineral waters). 
Both the Opposition Division and the Fourth Board of Appeal of OHIM upheld the opposition on the grounds that there was a likelihood of confusion with the earlier trademark SPA under Article 8(1)(b) of the Community Trademark Regulation (40/94). Although SPA Monopole had also invoked Articles 8(4) and 8(5) of the regulation, the Opposition Division relied solely on the likelihood of confusion under Article 8(1)(b). L'Oréal appealed to the CFI.
The CFI confirmed that according to settled case law, the likelihood of confusion must be assessed globally, taking into account all relevant circumstances of the case (see Oberhauser v OHIM (Case T-104/01)). Moreover, the comparison between the marks must be made by examining each of them as a whole. Only if all the other components of the marks are negligible can the assessment of the similarity be carried out solely on the basis of the dominant element (see OHIM v Shaker (Case C-334/05 P)). However, it is possible that an earlier mark used in a composite sign still plays an independent distinctive role in that composite sign, without necessarily constituting the dominant element. Therefore, the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from economically linked undertakings, in which case the likelihood of confusion must be held to be established.
With regard to the comparison of the goods, the CFI noted that the identity of the goods was not in dispute.

With regard to the likelihood of confusion, the CFI found that the earlier mark, without making up the dominant element of the trademark applied for, retained an independent distinctive role within the latter. The CFI confirmed prior case law (see Meric v OHIM (Case T-133/05)) according to which consumers generally pay greater attention to the beginning of a mark than to the end. In the present case, the CFI found that the presence of an additional word in the trademark applied for did not outweigh the similarities between the marks.

The CFI also noted that cosmetic manufacturers frequently put several lines of products on the market under different sub-brands. Therefore, the fact that the mark applied for consisted of the earlier mark SPA followed by the word ‘therapy’ could lead consumers to believe that it related to a line of products marketed by SPA Monopole.
L'Oréal argued that the word 'spa' was descriptive or generic in respect of cosmetic products. The CFI found that the evidence provided by L'Oréal pointed only to a possible descriptive and generic character of that word in respect of places for hydrotherapy (eg, hammams or saunas), but not to the existence of a descriptive and generic character in respect of the cosmetic products covered by the mark applied for.  
In light of the above, the CFI concluded that the relevant public would believe that the products sold under the marks came, at the very least, from economically linked undertakings. The action was thus dismissed.
Nina Ringen, Plesner, Copenhagen

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