General Court (Second Chamber), 16 March 2016, in case T‑201/14 (The Body Shop International plc. v. OHIM and Spa Monopole, compagnie fermière de Spa SA/NV)
Regulation (EC) No 207/2009 − Article 8(5) − Relative grounds for refusal — Unfair advantage taken of the distinctive character or the repute of the earlier trade mark
The term ‘spa’ is not descriptive or weakly distinctive with regard to cosmetic products. The term ‘spa’ may possibly be a generic and descriptive term for places for hydrotherapy, but not for cosmetic products, on the ground that the links between cosmetic products and hydrotherapy centres are not such that the generic nature or descriptiveness of that word can be extended to them
There is a risk of a free-riding transfer of the advertising effort made by the proprietor; the later mark would take unfair advantage of the repute of the earlier mark 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.
Since the generic nature and descriptiveness of the word ‘spa’ does not extend to cosmetic products, the word ‘spa’ has not become so necessary for the marketing of those products that the applicant could not reasonably be required to refrain from the use of it in the mark applied for, so that there was no due cause for the use of the term ‘spa’ in the mark applied for.
categoria:European Case Law