How does the average consumer perceive the term "SPA"?

I was intrigued to read about the city of Spa, located in Eastern Belgium. Celebrated for its healing mineral springs, natural waters, and (allegedly) the world’s first beauty pageant in 1888, this small town located in the Ardennes region also appears to cause headaches for trade mark applicants.

As I took a look at the EUIPO’s index of pending Grand Board cases, the above proved to be the case in an interesting referral (by way of an interim decision) from the EUIPO First Board of Appeal.

The EUIPO First Board of Appeal was asked to decide over the relevant public’s perception of the term “SPA” which is polysemic: on the one hand, the term “SPA” is the designation of the Belgian town Spa, where there is also a health spa, well-known to the Belgian public; on the other hand, it is also the common name that designates a spa-facility (a hydrotherapy facility).

The question as to which of these two meanings would prevail in the relevant public’s perception will be crucial to the outcome of the case.

Background

With an application filed in January 2015 the applicant, Compagnie De Vichy, sought to register the following EU trade mark in various shades of blue:

Registration was sought for services in Class 43 (hotel services, providing of food and drink, temporary accommodation, motels, restaurants, cafeterias, tea rooms, bars (except clubs), holiday homes, hotel reservations for travellers, consultancy and advice (not relating to the conducting of business) in the fields of hotel management and services for providing food and drink) of the Nice Classification. 

Spa Monopole (the opponent) filed an opposition in May 2015 pursuant to Article 8(1)(b) and Article 8(5) of the EU Trade Mark Regulation (EUTMR), on the basis of its two earlier registered national trade marks:

1. “SPA” for goods in Class 32 (Mineral and aerated waters and other non-alcoholic beverages, syrups and other preparations for making beverages), and
2. “LES THERMES DE SPA” for services in Class 44 (Services rendered by a thermal establishment including services relating to health care, baths, showers and massages).

The Opposition Division

In December 2016, the Opposition Division refused registration of the applicant’s mark by relying on Article 8(5) EUTMR, holding that such sign would take unfair advantage of the repute of the “SPA” trade mark. In particular, it considered that the two marks would be similar since they shared the same element “SPA” and that the repute of the “SPA” trade mark in Brussels for mineral and aerated waters had been proven.

Furthermore, the public would establish a ‘link’ between the two signs because of:

• the element “SPA”, which is a distinctive component in the trade mark applied for: the name ‘VICHY’ has little distinctive character, since it indicates the location where the services are provided,
• the word "SPA" is written in small print in the trade mark applied for. This would indicate to the public that this is the parent trade mark, so that the trade mark would be understood as a whole as ‘VICHY by SPA, and
• the complementarity between the applicant’s services and the opponent’s beverages.

The Board’s decision

The First Board of Appeal considered the issue of consumer perception to be of importance to the case and therefore, pursuant to Article 1(b)(a) of the Rules of Procedure of the EUIPO, referred the case to the Grand Board for further assessment.

Amongst the reasons noted, the First Board of Appeal raised concern in the assessment of the term “SPA”, which has become, in many languages, a common word that designates a hydrotherapy facility:

1. It is a well-known fact that the services offered by numerous hotels throughout the European Union (and beyond) include, where they are high-end, a spa and the corresponding wellness treatments (scented baths, massages, etc.)
2. It is also well-known that the public is placing increasing importance on the presence of a spa in a hotel and that the presence of a spa in a hotel has become a vital commercial asset in a highly competitive sector such as the hotel sector. This explains the existence of another well-known fact, namely that the presence of a spa is often highlighted in hotel advertising.

Even if the common word “SPA” is derived from the Belgian town, European consumers who are potentially interested in hotel services and who would read this word in hotel advertising or in the description of the services offered by hotels to customers, would not perceive this etymological link. 

The Board also pointed out that “SPA” has been used in the hotel sectors for a long time, as a synonym for a hydrotherapy facility (e.g. Jacuzzis) and related services (e.g. relaxing massages and beauty care), in the same way as words such as ‘wellness’ or ‘resort’.

Concluding remarks

As the dispute between the parties in the present case specifically relates to a trade mark in which one of the elements is the word "SPA", the solution largely depends on the perception that the relevant public has of this element in the light, on the one hand, of the way in which it is represented in the trade mark applied for and, on the other hand, of the services for which the applicant is seeking to register and consequently use the trade mark.

Let’s see what the Grand Board says on this matter!