Ruling of the Supreme Court of Latvia in the administrative case No. A420209716 (16 November, 2018)

Our client The Body Shop International PLC. in 2014 filed an opposition against the trademark registration No. M 67 497 with respect to goods in class 3.

 . The opposition was based on detriment to the well-known and reputed marks “THE BODY SHOP” and likelihood of confusion between the marks “THEFACESHOP” and “THE BODY SHOP”.

Throughout all instances this case was handled by the trademark and design attorney, lawyer Gatis Meržvinskis and the trademark attorney, lawyer Gunta Zariņa.

At first, the Board of Appeal of the Latvian Patent Office admitted the opposition as well-reasoned and decided to invalidate the mark “THEFACESHOP”. Afterwards, the owner of the contested mark appealed the decision of the Industrial Property Board of Appeal before the Administrative District Court. Later on, another appeal was filed before the Administrative Regional Court, which resulted in the final appeal before the Supreme Court of Latvia. All court instances acknowledged the opposition as well-established, while the Supreme Court rejected to initiate cassation proceedings at all.

To go in more detail, the Administrative Regional Court fully supported argumentation and the “global appreciation” test carried out by the Administrative District Court. As it was mentioned in the judgment of the first instance court, the marks at issue are sufficiently similar to cause associations and cause detriment to the distinctiveness and reputation of the famous “THE BODY SHOP” marks. Even though the contested mark “THEFACESHOP” is written as one word due, the bold letters in the middle of the mark clearly splits this mark into three words “THE FACE SHOP”. This fact contributes to the phonetic similarity between “THE BODY SHOP” and “THE FACE SHOP”. As a matter of fact, the court admits that the contested mark has been made in a very similar manner in comparison with the earlier marks. They all have the same length, the same number of letters, the font and the beginning and endings of marks are identical.

Overall, the courts referred to the settled CJEU case-law, which foresees that the average consumer normally perceives a mark as a whole and does not analyze its various details. In fact, rarely consumers see the marks right next to each other, but after a while, so the first impression of the common elements is kept in the mind of consumers.

Both the Administrative District Court and Regional Administrative Court acknowledged high reputation of “THE BODY SHOP” marks in Latvia and the EU. Thus, these marks enjoy a broader scope of protection. Further, the Administrative District Court highlighted some peculiarities in the production of cosmetics – producers create various cosmetic lines for consumers and use marks, which are composed of common dominating elements or the name of the company. This finding was supported by the Administrative Regional Court, too.

To sum up, all court instances recognized possible detriment to the marks “THE BODY SHOP”, which would result in attraction of inattentive consumers at the expense of long-standing marketing campaigns. Further, according to the courts’ findings, the fact that registration of the contested mark would lessen value and distinctiveness is certain. This is because consumers who recognise “THE BODY SHOP” products would be left with the impression that products with the designation “face” is a particular product line devoted to face care.