WIREDGOV

In 2010, The Body Shop International, established in Littlehampton (UK), filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (OHIM). 1 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 yesterday’s judgment, the Court dismisses the action brought by The Body Shop.

It thus confirms its previous case-law, 2 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 states 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 includes mineral water. 

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