January 14, 2019

Facts

The applicant, Mad Dogg Athletics Inc, was the owner of a EU Trade Mark registration for the word SPINNING in Class 9 (“Audio and video cassettes”), Class 28 (“Exercise equipment”) and Class 41 (“Exercise training”).

In February 2012, the Czech company, Aerospinning Master Franchising s.r.o., filed an application with the EUIPO for partial revocation of Mad Dogg’s mark in relation to Classes 28 and 41 pursuant to Article 51(1)(b) of the Trade Mark Regulation (207/2009/EC), which states that revocation will be granted where “if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered”.  It argued that the term “spinning” had become, in the Czech Republic, the common name for a type of “exercise training” and for “exercise equipment” used for that training.

In July 2014, the Cancellation Division revoked Mad Dogg’s rights in their entirety.  Mad Dogg appealed and the Fifth Board of Appeal dismissed Mad Dogg’s case.

Mad Dogg applied to the General Court to have the EUIPO’s decision annulled.  It submitted that the BoA had erred by only considering the territory of the Czech Republic when assessing the ground for revocation.  In Mad Dogg’s view, an assessment limited to that Member State alone was not sufficient for revocation of the mark, which (it said) had a reputation throughout the EU.  Mad Dogg argued that the mark could only be revoked if it was perceived as a common name by the relevant public throughout the EU or at least in an overwhelming part of it.

Decision

The GC noted that, under EU law, EU trade marks are given uniform protection across the entire area of the EU.  Further, although Article 51(2) provides for partial revocation in respect of goods or services, there is no such provision with regard to territory. Therefore, any revocation decision is binding across the whole of the territory of the EU.  Accordingly, contrary to Mad Dogg’s assertions, it was sufficient for a mark to have become a common name and to have lost all distinctive character in just one Member State for its proprietor’s rights to be revoked across the whole of the EU.

The GC rejected Mad Dogg’s argument that for a mark to be revoked, it had to have become a common name due to the activity or inactivity of its proprietor throughout the EU or in an overwhelming part of it.  The GC said that protection of a trade mark at EU level meant that, in return, its proprietor had to exercise sufficient vigilance in defending and asserting its rights throughout the whole of the EU.  Accordingly, it was right to revoke a proprietor’s trade mark rights if, owing to the proprietor’s inactivity, the trade mark had become a common name in just part of the EU or even in a single Member State.

Mad Dogg also made various arguments alleging that the BoA had erred, for example, by incorrectly referring to certain authorities.  The GC disagreed, finding that it had correctly applied, as its main area of reasoning, the basic legal principle underpinning the whole of the EU Trade Mark Regulation, namely the unitary character of the EU trade mark.

However, the GC said, the BoA had been wrong to consider that the relevant public to be taken into account when assessing the ground for revocation should be confined to end users of “exercise equipment” only, without considering professional customers.

It was agreed that the sporting activity in question was practised on indoor cycles, in a group, generally in gyms, under the guidance of a fitness instructor.  Mad Dogg adduced evidence showing that the majority of its indoor cycles were sold to commercial operators of gyms, sports facilities and rehabilitation facilities and that end users very rarely bought its indoor cycles owing to their high purchase price.

The GC found that business customers played a central role in the “exercise equipment” market and had decisive influence on the selection, by end users, of “exercise training” services.  Through their knowledge of the SPINNING trade mark’s function as an indication of origin, they enabled the process of communication between providers and end users of those services to be successfully carried out.  Therefore, the GC said that the BoA had been wrong to consider that professional customers were not part of the relevant public when assessing whether the contested mark had become the common name in the trade for “exercise equipment”.

The GC held that the BoA’s error of assessment in defining the relevant public vitiated the contested decision in relation to Classes 28 and 41 and, accordingly, justified its annulment.  (Case T-718/16 Mad Dogg Athletics EU:T:2018:758 (8 November 2018) — to read the judgment in full, go to the curia search form, type in the case number and follow the link).