Europe: Spa Wisdom trade mark application for cosmetics rejected

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Europe: Spa Wisdom trade mark application for cosmetics rejected

The EU General Court rejected The Body Shop's Community trade mark application for Spa Wisdom, covering cosmetic products, because of the potential conflict between this application and Spa Monopole's earlier registration for Spa, a Benelux brand with a reputation for mineral and aerated waters.

With this decision the General Court confirms earlier case law that while the word Spa is generic or of descriptive nature for wellness services based on hydrotherapy as rendered by a hammam or sauna, Spa is not a generic term for cosmetic products.

Even though one can imagine the possibility of cosmetic products being available in spas or the possibility that cosmetics are being described as "spa-quality", the link between cosmetics and spas and hammams is not such that the generic or descriptive nature of the word "spa" should be extended to them.

On the other hand, there is some closeness between the goods cosmetics and mineral water. A number of famous mineral water brands also sell cosmetic products that comprise mineral water. Spa Monopole has marketed a Spa vaporiser containing natural mineral water which was sold on the same shelves as cosmetics. The image of health, beauty, purity and richness in minerals conveyed by the Spa mark for water likewise applies to cosmetic products. Cosmetic products are intended to protect, take care of and cleanse the skin in the pursuit of beauty.

The General Court's decision confirms that mineral water is to be considered similar enough to cosmetics such that an opposition under Article 8(5) CTMR based on a reputation in the former can succeed. In the present case, it is not disputed that the earlier mark Spa has acquired a high reputation in respect of the goods covered by that mark on account of its genuine and very extensive use. Considering the fact that Spa and Spa Wisdom have an average degree of similarity and noting the high reputation of the trade mark Spa, the General Court held that the initial OHIM (now EUIPO) decision was correct in finding that the use of Spa Wisdom for cosmetics could take unfair advantage of the repute of the trade mark Spa and of the image of health, beauty, purity and richness in minerals conveyed by that mark.

This decision of the General Court not only shows that "spa" is not generic for cosmetics but also demonstrates the broad application of Article 8(5) CTMR for marks with a reputation.The risk of dilution of the reputable Spa trade mark for drinks by the mark Spa Wisdom for a line of cosmetics was avoided.

bertels.jpg

Denys Bertels


V.O.Johan de Wittlaan 72517 JR The HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67 99info@vo.euwww.vo.eu

more from across site and SHARED ros bottom lb

More from across our site

As it celebrates its 50th anniversary this year, the firm discusses private equity interest in IP, why the UPC is a key priority, and being a ‘strategic adviser’ to clients
Thomas Rukin discusses IP due diligence, his joy at seeing colleagues succeed, and taking inspiration from Marcus Aurelius
The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Gift this article