General Court finds that cosmetics and health spa services are similar

European Union

The judgment of the General Court in Costa Crociere SpA v Office for Harmonisation in the Internal Market (OHIM) (Case T-388/13) concerning the similarity between goods on the one hand and services on the other will be useful for practitioners. One might question, however, whether the decision strikes the right balance between trademark protection and competition, or whether it goes too far in terms of finding similarity between goods and services of a different nature.

Italian company Costa Crociere SpA filed a Community trademark (CTM) application for the word mark SAMSARA for “spas, Turkish baths, sauna services, health spa services, all provided on board cruise ships” in Class 44 of the Nice Classification.

French perfume and cosmetics firm Guerlain SA filed an opposition based on its earlier CTM registration for the identical mark SAMSARA for “soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices” in Class 3. The opposition was successful. The Opposition Division of OHIM found that there was a likelihood of confusion with regard to all services covered by Costa’s application. The Fourth Board of Appeal of OHIM confirmed the decision.

Costa brought the matter before the General Court, disputing the similarity of the goods and services at issue and claiming that the application should be allowed for all services or, alternatively, that the application should at least be allowed for sauna and Turkish bath services.

The General Court confirmed the Board of Appeal's finding that the relevant public consisted of average consumers in the European Union. There was no question that the signs at issue were identical. The only question for the General Court to decide was whether the goods and services were similar to a degree which would lead to a likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation (207/2009).

The General Court pointed out that all relevant factors should be taken into account in the assessment of the similarity between the goods and services. One factor was the nature of the goods and services, and the General Court confirmed that the goods and services at issue were different in nature. This finding did not, however, preclude the existence of any similarity between the goods and services. (The English text of the judgment seems to contain an error here as it states the opposite in Paragraph 24 of the decision. The French text appears to be correct.)

Another important factor in the assessment was the intended purpose of the goods and services. The General Court confirmed the view of the Board of Appeal that the overall purpose of the goods and services was beauty and health care. Furthermore, the court held that the distribution channels might overlap and that the target public was identical. The reasoning behind this was that soaps, cosmetics and perfumes are often used in the cosmetic treatments included in the services offered in spas, Turkish baths and health spas, and that the establishments offering these services may also be selling beauty and health products. The fact that Costa provided its services on board cruise ships was not found to make any difference.

The General Court went on to consider whether the goods and services at issue were in competition with each other or were complementary. The court found that there was some complementarity, as a spa treatment or Turkish bath treatment will usually be followed by the application of body lotions and moisturising creams.

The decision of the Board of Appeal was confirmed and the opposition upheld with respect to all the services covered by Costa’s application.

According to Costa’s OHIM file, the company also sold beauty care products in connection with the services offered under the trademark SAMSARA on board the cruise ships. This contributed to the court’s finding that the goods and services at issue were similar.

Normally, the comparison of goods and services should be based on the wording indicated in the respective lists of goods or services only, and not on the goods actually marketed under a certain trademark. This has been established in case law (see KREMEZIN (Case T-487/08), Paragraph 71). The judgment in the present case shows that information about actual use can be applied in a slightly different way that is apparently within the scope of the arguments acceptable in a similarity assessment.

On the other hand, as regards the actual circumstances of use of Guerlain’s earlier mark, the General Court stated that these circumstances could not be taken into consideration. As Costa had not requested proof of use, the decision should be based only on the goods covered by the registration.

Arguably, it is correct that a spa treatment or Turkish bath treatment will usually be followed by the application of body lotions and moisturising creams, and that the goods and services are complementary to some degree. However, it could also be said that a spa treatment could be followed by a healthy drink, such as water or herbal tea, or by relaxing music. Would such goods or services then be complementary as well?

It seems that some caution should be exercised in order to avoid unreasonable results based on the complementarity between goods on the one hand and services on the other, in the absence of enhanced distinctiveness of the earlier mark. After all, as the General Court stated in its judgment, goods and services are different in nature.

Furthermore, the broad definition of the intended overall purpose of the goods and services (“beauty and health care”) could cover an extremely wide range of products or services, all of which should not automatically be considered similar.

It will be interesting to see whether the judgment is appealed.

Lisbet Andersen, Aumento Law Firm, Copenhagen

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