Luxembourg court dismisses Body Shop’s community trade mark appeal

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In 2010, The Body Shop International, established in Littlehampton (UK), filed an application for registration of a Community trade mark with the OHIM.

Registration as a mark was sought for the word sign SPA WISDOM. The application for registration concerned, inter alia, cosmetic products.

Spa Monopole, compagnie fermière de Spa, established in Spa (Belgium), filed a notice of opposition to that registration. Its opposition was based on a number of earlier marks registered in Benelux which use the term “spa”, including the word mark SPA, which covers, inter alia, mineral water and aerated waters.

In January 2014, OHIM upheld the opposition and rejected the application for registration of the mark SPA WISDOM in its entirety. It found that there was a risk that the use of that mark would take unfair advantage of the distinctive character or the repute of Spa’s earlier mark.

On 26 March 2014, The Body Shop brought an action before the General Court in order to have OHIM’s decision annulled.

In its judgment, the court dismissed the action brought by The Body Shop. The court thus confirmed its previous case-law, holding that the term “spa” may possibly be a generic and descriptive term for places for hydrotherapy, such as hammams or saunas, but not for cosmetic products, on the ground that the links between cosmetic products and hydrotherapy centres are not such that the generic nature or descriptiveness of that word can be extended to them.

The court stated that the goods covered by the word mark SPA, namely mineral water, may be used as ingredients in cosmetic products. There is, therefore, a certain closeness between those two types of goods, which is reinforced by the fact that mineral water operators sometimes sell cosmetic products which include mineral water.

Consequently, in the light of the target public with respect to the signs at issue, namely the general public in the Benelux countries; the average degree of similarity between those signs; the closeness between the goods covered by the signs at issue; and the high reputation of the trade mark SPA, OHIM did not err in finding that the relevant public was likely to establish a link between the signs at issue.

Furthermore, the court pointed out that the image of the mark SPA and the message it conveys relate to health, beauty, purity and richness in minerals. That also applies to cosmetic products.

Those products are intended to protect, take care of and cleanse the skin and their purpose is that of beauty.

The court held therefore that OHIM was right to find that there was a risk that the use of SPA WISDOM would take unfair advantage of the repute of the trade mark SPA and of the image conveyed by that mark, with the result that the marketing of the goods covered by the mark applied for would be made easier by their association with the earlier mark.