THE BODY SHOP held to have acquired distinctiveness though use


The District Court of The Hague has held that the trademark THE BODY SHOP had acquired distinctiveness through use (Case KG 08-1416, December 4 2008).

The Body Shop owns Benelux and Community trademark registrations for the mark THE BODY SHOP. The Body Shop started preliminary injunction proceedings against Men's Body Shop BV, claiming that the use of the mark MEN'S BODY SHOP was infringing The Body Shop's trademarks. The Body Shop based its claim solely on a likelihood of dilution under Article 9(1)(c) of the Community Trademark Regulation (40/94) and Article 2(20)(1)(c) of the Benelux Convention concerning Intellectual Property (Trademarks and Designs).
The District Court of The Hague considered that although THE BODY SHOP might initially have been a descriptive sign without any distinctive character, it had gained secondary meaning due to its longstanding use within and outside the Netherlands. According to the court, The Body Shop had educated the public intensively, through advertising campaigns, as to the fact that the sign is a trademark. The distinctiveness of the trademark THE BODY SHOP was highlighted by the fact that Men's Body Shop had acknowledged its reputation at the hearing.
The court also considered that the words 'body' and 'shop' in the trademark THE BODY SHOP had acquired (and maintained) distinctiveness, which meant that the combination of these words was no longer a generic indication for a shop selling body care products. This finding contradicted Men's Body Shop's argument that 'body' and 'shop' are general words.
In addition, the court found that the words 'the' and 'men's' were not distinctive. Therefore, even though the marks THE BODY SHOP and MEN'S BODY SHOP were not identical, they were confusingly similar. Consequently, due to the use of the mark MEN'S BODY SHOP, there was a danger of diluting the trademark THE BODY SHOP, as such use was detrimental to the distinctiveness of the mark. Moreover, there was a danger that the combination of the words 'body' and 'shop' might become generic for these kinds of shops.
The court did not take into account the November 27 2008 decision of the European Court of Justice (ECJ) in Intel v CPM (Case C-252/07). In Intel, the ECJ held that proof that a later mark is detrimental to the distinctive character of an earlier mark requires:
  • evidence of the change in economic behaviour of the average consumer; or
  • a serious likelihood that such a change will occur in the future.
In the present case, the court granted most of The Body Shop's claims - apart from the claim for €22,000 in attorneys' fees. The Body Shop was unable to explain why this particular case was not a straightforward IP case, and the court thus awarded the indicative rate of €6,000. 
The court also showed leniency towards Men's Body Shop (which appeared in personam). The Body Shop had indicated that it would agree if the court decided to give Men's Body Shop more time to comply with the injunction.
Eva den Ouden, Allen & Overy LLP, Amsterdam

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