A Bodily Confusion – THE BODY SHOP vs. THEFACESHOP

THE BODY SHOP vs. THEFACESHOP

The Body Shop International PLC, with its registered seat in UK, filed on 25 August 2014 an opposition against the trademark registration THEFACESHOP by THEFACESHOP Co Ltd., with registered seat in South Korea. The Body Shop International PLC based its opposition on Swiss trademarks THE BODY SHOP and THE BODY SHOP (fig.) as well as the international trademark THE BODY SHOP (fig.).

The parties did not contest that the trademarks were registered for identical or at least similar products and Services (cosmetic, body care, and beauty products). THEFACESHOP Co Ltd. denied, however, that the trademarks are similar and that this similarity results in a risk of consumer confusion.

The Swiss Intellectual Property Institute concluded on 31 March 2016 that there is no risk of consumer confusion. It held that the trademarks are only similar with regard to the descriptive elements THE and SHOP. A risk of confusion was therefore excluded. Pursuant to the Institute the Body Shop International PLC was not able to provide sufficient evidence that the trademark THE BODY SHOP is well-known in Switzerland.

Descriptive Trademark Elements are not irrelevant

In its decision of 12 December 2016 the Swiss Federal Administrative Court rejected the findings of the Swiss Intellectual Property Institute.

Pursuant to the Swiss Federal Administrative Court there is a risk of consumer confusion. It ordered that the trademark THEFACESHOP be deleted from the Swiss trademark register.

The following arguments of the Swiss Federal Administrative Court are decisive:

• The general impression of trademarks is decisive. They should not be cut in single pieces when assessed;
• Distinctive trademark elements strongly affect the general impression of a trademark. Yet, descriptive elements are not irrelevant;
• Descriptive trademark elements must, in particular, be taken into consideration if the distinctiveness of a trademark is not created by single elements, but rather by the combination of all trademark elements, which may be descriptive or which may have solely a low distinctiveness;
• The descriptive elements THE SHOP are identical. The trademarks differ, however, in the middle element FACE and BODY. Yet, FACE and BODY are not entirely different. They are similar with respect to the number of letters (each has four letters), vocals (O/Y and A/E), and consonants (B/D and F/C). These similarities result in a similar general impression of the middle elements FACE and BODY;
• If two trademarks are identical with respect to descriptive trademark elements, they are generally not confusingly similar. Yet, this is not true if the older trademark has gained increased public recognition due to a long period of use or due to an intensive marketing and if the descriptive trademark elements participate or benefit from that increased recognition;
• In the case at hand, the trademarks of The Body Shop International PLC consist of three elements with a reduced distinctiveness: THE-BODY-SHOP. Nonetheless, the trademark THEFACESHOP consists also of elements with a minor degree of distinctiveness. The Court held that there is a risk of consumer confusion because the word elements were not only similar, but THEFACESHOP also “copied” the structure of the THE BODY SHOP trademarks: THE at the beginning, SHOP at the end, and in the middle a similar word (FACE vs. BODY) that creates a similar association of ideas (with respect to cosmetic products). Because of this numerous similarities THEFACESHOP creates a similar general impression;
• The products and services are identical and the trademark elements are similar. In order to avoid a risk of consumer confusion THEFACESHOP had to create a different general impression, which was not the case. As a consequence, consumers may incorrectly assume that the trademark THEFACESHOP is used by The Body Shop International PLC for a new cosmetic line.

Further information:

Swiss Federal Administrative Court, B-2711/2016, of 12 December 2016