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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.

Denys Bertels

V.O.Johan de Wittlaan 72517 JR The HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67

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