Consumers liable to establish 'link' between SPALINE and SPA, says CFI

European Union
In L'Oréal SA v Office for Harmonization in the Internal Market (OHIM) (Case T-21/07, March 25 2009), the Court of First Instance (CFI) has upheld an opposition against the registration of the trademark SPALINE.

Artec Systems Group Inc applied for the registration of SPALINE 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 (cosmetics) and 32 (mineral water). The application was subsequently transferred to L’Oréal SA.
  
Both the Opposition Division and the First Board of Appeal of OHIM upheld the opposition under Article 8(5) of the Community Trademark Regulation (40/94) based on the reputation of the SPA mark. Even though SPA Monopole also invoked Articles 8(1)(b) and 8(4) of the regulation, the Opposition Division relied solely on the reputation of the SPA mark under Article 8(5). L’Oréal appealed to the CFI.

Referring to La Perla v OHIM (Case T-137/05), the CFI confirmed that according to settled case law:

"the protection provided by Article 8(5) [...] is not conditional in the finding of such a degree of similarity between the marks in question that there is a likelihood of confusion between them on the part of the relevant public. It suffices that the degree of similarity between those marks causes the relevant public to establish a link between them."
 
The CFI noted that the reputation of the earlier mark for mineral waters was not disputed by the parties. Further, the CFI stated that the marks SPA and SPALINE were similar from a phonetic, visual and conceptual point of view.
 
The CFI also dismissed L’Oréal's argument that the word 'spa' was descriptive or generic in respect of cosmetic products, and added that that word was the most distinctive component of the mark applied for.  
 
Concerning the link which could be made by the relevant public between the marks, the CFI stated that account should be taken of the fact that the marks targeted the same public and covered similar goods. Thermal waters and cosmetic products can be used in conjunction for skin and beauty treatments, while mineral waters and their mineral salts can be used in the production of soaps and other cosmetic products. Further, the CFI stated that the similarity between the goods was enhanced by the fact that mineral water operators sometimes sell cosmetic products composed of mineral waters. Therefore, the relevant public was liable to establish a link between the marks in question.
 
The CFI noted that SPA Monopole was not required to demonstrate actual and present harm to its mark, but had to adduce prima facie evidence of a future risk - which was not hypothetical - of unfair advantage or detriment. Moreover, the CFI noted that the stronger the link which the relevant public could make between the two marks, the greater the risk that use of the mark applied for would take unfair advantage of the reputation of the earlier mark. The CFI found that such risk was established in this case. This conclusion was not invalidated by L’Oréal's undisputed reputation in the area of cosmetics or by the significant extent of its marketing activities. 
 
The action was thus dismissed.

The parties were also involved in another case concerning the trademark SPA THERAPY. The CFI issued its decision in this case on the same day (for further details please see "SPA THERAPY held to be confusingly similar to SPA").

Nina Ringen, Plesner, Copenhagen

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