Since applying to register the brand back in 2010 as a ‘community trade mark’, The Body Shop has faced opposition from Belgian brand, Spa Monopole.
Its’ argument is based on a number of earlier marks registered in Benelux which use the wording ‘SPA’, which covers, inter alia, mineral water and aerated waters.
The company has argued that The Body Shop will have an ‘unfair advantage’ in Belgium, the Netherlands and Luxembourg as consumers associate the repute of the trademark ‘SPA’ and of the image conveyed by that mark.
Applications for community trademarks are submitted to the OHIM and are valid in the EU and co-exist with national trademarks.
However, firms that disagree with that office’s decision can bring their dispute before the General Court.
According to Curia Europa; OHIM upheld Spa Monopole’s opposition in January 2014 and rejected the application to register Spa Wisdom in its entirety.
Following this, the Body Shop exercised its right to go before the European General Court to have the decision annulled but as of March 2016, the Court has dismissed that action.
EU Court ruling: ‘OHIM was right to find a risk of unfair advantage’
According to Curia’s press release on the EU General Court’s ruling; the term ‘spa’ can refer to a generic and descriptive term for places for hydrotherapy, such as hammam or saunas, but not for cosmetic products.
It ruled that while there is a closeness between the two goods, reinforced by the fact that mineral water operators sometimes sell cosmetics which include mineral water, the image of the mark ‘Spa’ and the message it conveys relate to health, beauty, purity and richness in minerals.
Thus, 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’ it stated; “OHIM did not err in finding that the relevant public was likely to establish a link between the signs at issue”.
Adding 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.”