'Spa' held to have lost distinctiveness in Korean cosmetic industry

The Supreme Court has confirmed a recent Patent Court ruling that the term ‘spa’ is no longer distinctive for cosmetics in Korea, and has not been distinctive since at least 2012 (Case No 2014Hu1020, September 4 2014). This decision is significant because the Supreme Court had recognised in 2003 that the term ‘spa’ was distinctive in the Korean cosmetic industry in around 1999.

The subject of the action before the Patent Court was the trademark HAIR SPA, which is owned by a major cosmetic company. The mark was found to be invalid by the court, despite the fact that the same company owns many registrations for marks including the term ‘spa’ in Korea.

The Patent Court noted in its decision that, in the current Korean market:

• many cosmetic companies use the term ‘spa’ in a descriptive manner to denote the moisturising effect of their products;

• many cosmetic companies also operate spa facilities where the term ‘spa’ is used in connection with their services; and

• consumers frequently use expressions such as ‘spa cosmetic’ to describe certain types of moisturising cosmetics.

As a result, Korean consumers recognise and understand the word ‘spa’ as being generally related to certain types of skincare services and cosmetics. The Patent Court thus concluded that the term ‘spa’ was used in the Korean market to describe the efficacy and use of certain cosmetic products and, as such, lacked distinctiveness for such products

Hoe Kee Lee, Cecile Su-Jung Kwon and Alexandra Bélec, Kim & Chang, Seoul