"Spa" – generic term for cosmetics?

In connection with the registration of its sign "Spa Wisdom" as a European trade mark at the EUIPO, the British company The Body Shop had to address the question with the owner of the priority earlier trade mark "SPA" whether the term "Spa" constitutes a generic term for cosmetics and thus is not capable of protection.

The cosmetics company The Body Shop applied to the Harmonisation Office for the Internal Market (EUIPO) for registration of the sign "Spa Wisdom" as a Community trade mark for cosmetic products.

The Belgian company Spa Monopole, compagnie fermière de Spa, filed a notice of opposition against this registration. The Belgian company based their opposition on several earlier trade marks registered in the Benelux countries bearing the term "Spa", including also the word mark "SPA", which is also registered for still and carbonated mineral waters.

The EUIPO upheld the opposition and rejected the application for registration of the trade mark "Spa Wisdom". The Office justified its decision on the grounds that use of the trade mark would take unfair advantage of the distinctive character or the reputation of the earlier trade mark "SPA" of the Belgian company.

Against this, The Body Shop brought an action for annulment of the EUIPO's decision before the Court of Justice of the European Union (EuGH).

Decision of the Court

By judgment of 16.03.2016, Az. T-201/14 (Press Release), the General Court dismissed the action brought by The Body Shop.

In its reasoning, the General Court held that whilst the term "Spa" could represent a generic term or a descriptive term for water therapy areas such as Turkish steam baths or saunas, "Spa" does not constitute a generic term for cosmetics, since there are no connections between cosmetic products and water therapy centres that would permit the descriptive character or the generic character of this word to be extended to these. Therefore, The Body Shop could not freely use this element of the trade mark.

Having regard to the relevant public addressed by the signs at issue, the average degree of similarity of the signs, the proximity of the goods covered by the signs at issue, and the considerable reputation of the trade mark SPA, the EUIPO was therefore entitled to conclude that the relevant public could make a connection between the signs at issue and that there was a likelihood of confusion.

Conclusion

Following the decision, "Spa" is not a generic term for cosmetics, and the sign "Spa Wisdom" is thus liable to be confused with the earlier trade mark "SPA". The Body Shop may, however, within two months of service of the judgment, bring a legal remedy limited to questions of law before the Court of Justice of the European Union (EuGH).