The Court of First Instance of the European Communities (CFI) gave its ruling last Thursday in Case T-93/06 Mülhens GmbH & Co KG v Office for Harmonisation in the Internal Market, Spa Monopole, compagnie fermière de Spa SA/NV.

Mülhens applied to register as a Community trade mark the words MINERAL SPA for 'soaps, perfumeries, essential oils, preparations for body and beauty care, preparations for the hair, dentifrices' in Class 3. Spa Monopole opposed, citing its earlier Benelux word mark SPA for "mineral water and aerated waters and other non-alcoholic beverages, syrups and other preparations to make beverages' in class 32. The opposition, based on Article 8(5) of Council Regulation 40/94, maintained that MINERAL SPA would probably be detrimental to, or take unfair advantage of, the distinctive character or the repute of its earlier SPA trade mark.

Mülhens appealed and argued that (i) Spa Monopole had not proved the reputation of the earlier trade mark, (ii) that the conflicting marks were even similar, given that the word 'spa' is descriptive in English and (iii) it was not possible to transfer reputation from mineral water to cosmetic products. The Second Board of Appeal dismissed the appeal. It decided that the relevant public was the general public, and that the earlier trade mark enjoyed a huge reputation in the Benelux for mineral water. The Board then stated that the conflicting marks were similar. Further, since the word 'mineral' was descriptive of some component of the goods covered by Mülhens' application the word 'spa' could be seen as the most distinctive element of its MINERAL SPA mark, given the reputation of SPA in the Benelux: in that jurisdiction SPA had acquired a secondary meaning and a strong distinctive character in relation to mineral water and, by extension, with respect to goods having a certain nexus with mineral water. According to the Board, since the earlier trade mark was included in the later one, the conflicting marks were sufficiently similar visually, aurally and conceptually for the average consumer to establish a link between them, without, however, confusing them. Despite the weak distinctive character of the word 'spa', it was not unlikely that consumers in the Benelux might associate the trade mark applied for with the reputed trade mark SPA. It was conceded that cosmetic products were not similar to Spa Monopole's drinks. However, the difference between them was insufficient to prevent the general public from establishing a link between them. For these reasobs it was quite likely that Mülhens' mark would take unfair advantage of the repute and the consistent selling power of SPA.

Mülhens appealed to the CFI, arguing that the Board failed to take account of essential parts of its pleadings and did not specifically determine the degree of reputation enjoyed by the earlier trade mark: in its view Article 8(5) applied only wher the reputation of the earlier trade mark was exceptional. Nor, Mülhens' view, was there any chance that the general public would associate the word 'spa' with the earlier trade mark and its mineral water. Further, the respective marks were dissimilar and there was no way that the reputation of the one could be transferred to the products covered by the other.

Dismissing the appeal, the CFI affirmed that, with regard to the relevant Benelux consumers, the link between the two marks for the purposes had been sufficiently established; the reputation of SPA for mineral water was, at the very least, very significant and the Board was justified in finding that Mülhens' use of its mark would take unfair advantage of the repute of the earlier trade mark.