The General Court (“GC”), by decision of February 27, 2015, dismissed the application for registration filed by Costa Crociere (a British/American owned Italian cruise line) for the trademark “Samsara” in class 44 for “Spas, Turkish baths, sauna services, health spa services, all provided on board cruise ships” because of the likelihood of confusion existing with the earlier identical trademark “Samsara” registered by Guerlain (the renowned French perfume house) for goods in Class 3 “Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices”.
The GC decision is part of a larger litigation that saw the trademark “samsara” disputed in different jurisdictions, including Italy.
In fact, prior to the GC decision, the first instance Court and the Court of Appeal of Milan found that the use by Costa Crociere of the word “samsara” in respect of spa services did not conflict with Guerlain’s trademark, as the term Samsara had to be considered partially devoid of distinctive character.
In particular, the Italian Courts maintained that the word “samsara” – that comes from Sanskrit and means “eternal cycle of life” – is evocative of Eastern cultures that "have become almost essential terms in the area of body care”, this resulting in a low degree of distinctiveness of the sign "samsara" for spas, thermal baths and wellbeing centres. Due to the above, it was excluded any risk that the public may link to Guerlain the services offered by Costa.
The final outcome of the Italian dispute is yet to come, as Guerlain lodged an appeal before the Italian Supreme Court. The GC - that is not bound by a decision given in a Member State – openly disregarded the arguments of the mentioned Italian decisions.
The GC found instead that the great majority of the consumers will not associate any meaning with the word ‘samsara’, that remains a fanciful word.
Therefore, the GC held that the term “Samsara" was not descriptive of either the goods for which the earlier trademark enjoys protection or the services covered by the trade mark application.