TUESDAY, 9 DECEMBER 2008
This is a man's men's body shop
The Dutch defendants Men's Body Shop B.V. and Handel Centrale "Hace" B.V. (who appeared in personam) were right in arguing that The Body Shop used to be a descriptive sign without any inherent distinctiveness when Anita Roddick started The Body Shop in 1976. This was the considered opinion of the Presiding Judge of the The Hague Court (Chr.A.J.F.M. Hensen) in a decision of December 4, 2008 in summary trade mark infringements proceedings started by The Body Shop International PLC and The Body Shop Benelux B.V. In the meantime, however, the trade mark The Body Shop gained an abundant distinctiveness - 'buildeth in the street' - due to use for years in and outside the Netherland. The distinctiveness was underlined by the defendants' acknowledgment at the hearing that The Body Shop has a reputation.
The plaintiffs based the infringement claims on dilution (art. 2.20 par. 1 sub c Benelux Convention on Intellectual Property and art. 9 par. 1 sub c CTMR), which the Presiding Judge finds to be present: the sign MENS' BODY SHOP - the sign used by defendants - and the trade mark THE BODY SHOP have the two last words in common. Not only the trade mark has an abundant distinctiveness due to use, but also the two last words in the trade mark. Both words are not generic anymore. 'Body shop' might have been a general word for a shop that sells body care products, but because the composition body shop has (maintained) distinctiveness in the meantime the generic defense is rejected.
The Presiding Judge decided that the 'The' in the trade mark as well as the 'Men's' in the sign are not distinctive. Accordingly he concluded that, although the trade mark and the sign are not identical, they were similar due to the use of an identical and distinctive composition of the two last words (out of three). This similarity is conceptual, and visual and auditive as well.
By the use of the sign MEN'S BODY SHOP there is a danger of dilution of the trade mark THE BODY SHOP, because it is detrimental to the distinctiveness of the trade mark. Just because the trade mark and the sign are both used for shops with products for body care there is a danger that the composition body shop will become generic for such a shop (against which the trade mark deserves to be protected).
Most of The Body Shop's claims were granted. As for the injunction the Presiding Judge decided for some leniency: the representative of the defendants stated that he had consulted an attorney at law before the proceedings started who gave him only a small chance of succes in these proceedings. Furthermore when the parties returned from a short break at the hearing The Body Shop declared that she could agree to a a little longer time for defendants to act according to the injuction. The Presiding Judge granted seven days after service of the decision to defendants.
With regard to the cost award - The Body Shop claimed € 22.220,82 - the Presiding Judge finds that the claimed amount is hors catégorie. The Body Shop was apparantly not able to explain why this was not an easy case in summary proceedings. The Presiding Judge thus concluded that it was an easy case and awarded € 6,000.
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