EGC: “Spa” not a Community trademark for cosmetics
http://www.grprainer.com/en/legal-advice/intellectual-property-law-and-trademark-law/trademark-law.html The term “Spa” is not a generic name for cosmetics and cannot be registered as a Community trademark. That was the verdict of the General Court of the European Union in its ruling of March 16 (T-201/14).
GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London conclude: The General Court of the European Union (EGC) had to rule on a trademark dispute between a British cosmetics chain and a Belgian producer of mineral water.
The British firm applied in 2010 at the Office for Harmonisation in the Internal Market (OHIM) to have the word mark “Spa …” registered as a Community trademark for its cosmetics. The Belgian company lodged an objection against this, arguing that it had registered many older trademarks featuring the term “Spa” in the Benelux countries, including the word mark “Spa” for various kinds of mineral water. The OHIM granted the objection and rejected the application for registration as a Community trademark. It stated that there was potentially a lack of distinctive character vis-à-vis the older word mark as well as the possibility of its reputation being taken advantage of. The cosmetics chain”s action for annulment of this decision was unsuccessful.
The EGC held that while the term “Spa” can be a generic name for places for hydrotherapy, the same cannot be said with respect to cosmetics. It went on to say that there are no links between cosmetics products and hydrotherapy centres that would justify expanding the scope of this term. Moreover, the kinds of mineral water covered by the word mark “Spa” can be used as ingredients in certain cosmetics, and consumers could make a connection between the two marks on this basis. The EGC concluded that this meant that there was a real risk of the older trademark”s reputation being unfairly taken advantage of.
When it comes to trademark law, a distinction has to be made between whether a trademark is registered for the national market or as a Community trademark for the whole of the European Union. As this case demonstrates, brand awareness is an asset of significant value to businesses. In order to prevent third parties from being able to profit from a trademark”s brand recognition and value, it ought to be registered. Registration has to be well prepared and cannot violate existing trademark rights.
The companies concerned can turn to lawyers who are competent in the field of trademark law for assistance and to enforce or fend off claims should trademark violations occur.
GRP Rainer LLP is an international law firm with lawyers and tax advisers specializing in business law, commercial law and company law and tax law. The attorneys counsel international commercial and industrial companies and corporations, as well as associations, mid-sized businesses, institutional investors and private individuals worldwide from offices in Cologne, Berlin, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart, Germany and London UK.