A huge reputation in the Benelux
GvEA, 19 juni 2008, Zaak T-93/06, Mülhens GmbH & Co. KG tegen OHIM / Spa Monopole (Nederlandse versie nog niet beschikbaar).
Oppositieprocedure op grond van ouder Benelux woordmerk SPA (water) tegen aanvraag Gemeenschapswoordmerk MINERAL SPA (cosmetica). Oppositie toegewezen door OHIM en Gerecht, waarbij de bekendheid van het merk doorslaggevend is. Ongerechtvaardigd voordeel trekken & the risk of a free-riding transfer of the advertising effort made by the proprietor of the earlier mark.
“34. The Board of Appeal states, at paragraph 26 of the contested decision, that the earlier trade mark enjoys a huge reputation in the Benelux for mineral water. As the Board of Appeal states at paragraph 24 of the contested decision, and the intervener points out in its response, the earlier trade mark has been used continuously in the Benelux for a number of years; SPA water is available throughout the territory of the Benelux with a strong presence in both mass and small-scale distribution; and Spa Monopole is the leader on the market for mineral water with a market share of 23.6%, has made significant advertising investments and sponsors a number of sports events. Those facts demonstrate that the earlier trade mark has a reputation, which is, at the very least, very significant in the Benelux for mineral water.
(…) 40. The concept of the unfair advantage taken of the repute of the earlier mark by the use without due cause of the mark applied for concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (VIPS, paragraph 40).
41. The risk of such a transfer has been established in the present case. First, as was stated correctly at paragraph 40 of the contested decision, the relevant public for the trade mark applied for, that is to say the general public in the Benelux, may be the same as that targeted by the earlier trade mark.
42. Second, the goods covered by the trade mark applied for are not so different from those covered by the earlier trade mark. As the Board of Appeal points out at paragraph 40 of the contested decision, thermal waters, cosmetic products, soaps and essential oils can be used together for skin and beauty treatments. In addition, mineral waters and mineral salts can be used in the production of soaps, other cosmetic products and preparations for the hair. Furthermore, mineral water operators sometimes sell cosmetic products comprising mineral water.
43. Third, the image of the earlier trade mark and the message that it conveys relate to health, beauty, purity and richness in minerals. That image and that message can apply also to the goods in respect of which registration was sought by the applicant, since they are used to preserve and improve health or beauty. Therefore, the applicant could take unfair advantage of the image of the earlier trade mark and the message conveyed by it in that the goods covered by the trade mark applied for would be perceived by the relevant public as bringing health, beauty and purity. Accordingly, the risk of a free-riding transfer of the advertising effort made by the proprietor of the earlier mark to the mark applied for has been established.
44. In addition, the applicant’s argument based on the fact that water is present in a vast number of different goods cannot succeed. As OHIM submitted at the hearing, it is not a question of whether toothpaste and perfume contain mineral water, but whether the public may think that the goods concerned are produced from or with mineral water.
45 . It follows that OHIM was justified in finding, in the contested decision, that it is likely that the applicant will take unfair advantage of the repute of the earlier trade mark.”
Lees het arrest hier.
