The General Court yesterday handed down its decision in The Body Shop International plc v OHIM and Spa Monopole. It rejected The Body Shop’s CTM application for SPA WISDOM, covering cosmetic products, because of the potential conflict between this application and Spa Monopole’s earlier registration for SPA, which covers mineral and aerated waters. In so doing, the General Court confirmed that the word SPA is not a generic term for cosmetic products.

This decision is interesting on three levels. Firstly, it confirms earlier case law that whilst the term SPA could be generic and descriptive for hammams or saunas, it is not for cosmetic products because the link between cosmetic products and hammams are not such that the generic or descriptive nature of the word could be extended to them. This is what the Court says, but one can imagine the possibility of certain cosmetic products being available only in spas or for traders to describe their cosmetic products as being “spa-quality”.

Secondly, the decision also 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, because there is a certain closeness between these goods, reinforced by the fact that mineral water operators sometimes sell cosmetic products which includes mineral water. In this opposition, when this is considered with 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 decision was correct in finding 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. The decision demonstrates the broad application of Article 8(5) CTMR for marks with a reputation; readers may note that Spa Monopole only seems to use their SPA mark in relation to bottled drinking water whereas The Body Shop was seeking registration of a mark for use in relation to cosmetic products, e.g. hand lotions.

Finally, it is interesting to muse on whether the same decision would have been reached had this been an infringement proceeding instead of a trade mark opposition.  Whilst trade mark opposition proceedings take into account notional and fair use of both the registered and the applied-for mark, case law appears to suggest that the Courts place greater emphasis on the actual use made of a defendant’s mark in infringement proceedings. In this case, whilst The Body Shop has commenced use of SPA WISDOM already on some products, this was (correctly so) not discussed at all in the opposition decision. Would this use by The Body Shop have made a difference in the outcome of a trade mark infringement proceeding?