Spa Monopole v EUIPO - YTL Hotels & Properties (SPA VILLAGE) (Judgment) French Text [2016] EUECJ T-625/15 (27 October 2016)

Spa Monopole v EUIPO - YTL Hotels & Properties (SPA VILLAGE) (Judgment) French Text [2016] EUECJ T-625/15 (27 October 2016)

The Court found that the Board of Appeal erred in assessing the similarity and proximity between the marks and services. The earlier mark SPA had a strong reputation, the marks were at least moderately similar visually, phonetically, and conceptually, and the services in class 43 were sufficiently proximate to the...

Source-derived case information.

Citation
[2016] EUECJ T-625/15
Parties
Applicant: Spa Monopole, compagnie fermière de Spa SA/NV; Respondent: Office de l’Union européenne pour la propriété intellectuelle (EUIPO); Intervener: YTL Hotels & Properties Sdn Bhd
Jurisdiction
European Union
Procedural Posture
EU Trademark Opposition Appeal / Judgment on Appeal From EUIPO Board of Appeal
Outcome
Appeal allowed in part; Board of Appeal decision partially annulled.
Legal Topics
Trademark Opposition, Relative Grounds for Refusal, Reputation of Earlier Mark, Likelihood of Confusion, Parasitism, Complementarity of Goods and Services
Intellectual Property Trademark Law European Union Law Trademark Opposition Relative Grounds for Refusal Reputation of Earlier Mark Likelihood of Confusion Parasitism +1 more

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Parties

Spa Monopole, compagnie fermière de Spa SA/NV

Applicant

Office de l’Union européenne pour la propriété intellectuelle (EUIPO)

Respondent

YTL Hotels & Properties Sdn Bhd

Intervener

Procedural Posture

EU Trademark Opposition Appeal / Judgment on Appeal From EUIPO Board of Appeal

  1. 1 Whether the Board of Appeal erred in rejecting opposition based on Article 8(5) of Regulation No 207/2009
  2. 2 Whether there is sufficient similarity and proximity between the earlier mark SPA and the applied-for mark SPA VILLAGE for services in class 43
  3. 3 Whether use of SPA VILLAGE would unduly benefit from or harm the reputation/distinctiveness of SPA

Ratio Decidendi

The Court found that the Board of Appeal erred in assessing the similarity and proximity between the marks and services. The earlier mark SPA had a strong reputation, the marks were at least moderately similar visually, phonetically, and conceptually, and the services in class 43 were sufficiently proximate to the goods covered by the earlier mark due to complementarity and shared channels. There was a real risk that use of SPA VILLAGE would unduly benefit from the reputation of SPA. Thus, the conditions of Article 8(5) were met and the opposition should have been upheld for the contested services.

Court Disposition

Appeal allowed in part; Board of Appeal decision partially annulled.

Orders

  • The decision of the EUIPO Board of Appeal of 11 September 2015 is annulled insofar as it rejected the opposition to registration of SPA VILLAGE for services in class 43.
  • EUIPO and YTL Hotels & Properties are ordered to pay their own costs and those of the applicant.