This article first appeared in Bugnion Journal – To view the Journal in full click here

In its judgment of November 8, 2018 in Case T-718/16 concerning the revocation of a European Trademark for the word SPINNING, the General Court confirmed the principle that a EUTM may be revoked if the trademark mark has become a common name for the relevant goods or services even in a limited part of the EU, or in a single Member State. In this case, however, the Court annulled EUIPO’s decision to revoke the EUTM, as its assessment failed to consider evidence from professionals in the relevant field, whose influence in the circumstances was considered greater than that of the end user.

In 2012 partial revocation proceedings were brought before EUIPO against Mad Dogg Athletics, Inc.’s EUTM No. 000175117 for the word mark SPINNING in respect of exercise equipment and exercise training. The basis for revocation was that the mark had become a common name to describe those goods and services in the Czech Republic (Article 51(b) CTMR – now Article 58(1)(b) EUTMR).

In July 2016 EUIPO revoked the EUTM, finding that the substantial evidence submitted “proved that the term ‘spinning’ had become, in the Czech Republic, the common name for a type of ‘exercise training’ and for the ‘exercise equipment’ used for that training” by end users and that the trademark owner, the US company Mad Dogg Athletics, Inc., had not taken sufficient initiatives to prevent this occurrence. As a result, the trademark had lost its distinctive character.

Mad Dogg Athletics brought an action for annulment of this decision before the General Court, alleging flaws in EUIPO’s reasoning, inter alia, its evaluation of the relevant territory and relevant public to be considered for assessing the grounds for revocation. With regard to the relevant territory, the trademark owner held that an assessment limited to one Member State alone was insufficient to determine revocation of an EUTM that enjoyed a reputation throughout the EU. With respect to the relevant public, Mad Dogg Athletics held that EUIPO’s assessment was flawed in that it considered only the perception of end users of the goods and services, while disregarding that of the professionals concerned, which played a greater role.

In its decision, the General Court addressed these issues as follows. It reiterated that the “unitary character of the EU trademark is the basic legal principle underpinning the entirety of [the EUTMR]”. That principle implies that the distinctiveness required to be present in a trademark, throughout the EU, at the time of its registration must be retained during the life of the registration and should not become, even in a limited part of the EU or a single Member State, a common name to identify the goods or services for which it is registered. Therefore, the EUIPO was entitled to revoke the EU trademark SPINNING based on evidence from a single Member State.

On the matter of the relevant public, however, the General Court held that EUIPO was wrong to limit its assessment only to the perception of the end users of the contested goods and services. During the proceedings it clearly emerged that in most cases the exercise equipment (indoor cycles) sold by Mad Dogg Athletics is purchased by commercial operators and fitness centres, hardly ever by end users. Those professional operators for the most part also provide the “exercise training” services that involve use of the goods in question and arrange for the group sporting activities to be conducted at their facilities. It was held that such commercial operators are key figures in the exercise equipment market and influence the end user’s selection of equipment and training sessions. Therefore, since the EUIPO failed to consider the perception of Mad Dogg Athletics’ professional customers in the Czech Republic when assessing whether the trademark SPINNING had become a common name for the goods and services in question, the decision to revoke EUTM No. 000175117 was annulled.

© BUGNION S.p.A. – May 2019