Is SPINNING generic? EU General Court explains how the relevant assessment is to be undertaken

Mad Dogg Athletics, based in California, is a company that markets various sporting equipment, including bicycles, men’s and women’s apparel, shoes, accessories, and functional training equipment, online.

Since 2000 the company has been also the proprietor of the EU word mark SPINNING for goods and services in Classes, 9 (audio and video cassettes), 28 (exercise equipment), and 41 (exercise training) of the Nice Classification.

In 2012 Aerospinning Master Franchising, a company from the Czech Republic, filed an application with the European Union Intellectual Property Office (EUIPO) for revocation of the SPINNING word mark, pursuant to Article 58(1)(b) of Regulation 2017/1001 (the EU Trade Mark Regulation). The basis for the claim was that SPINNING had become the common name for the ‘exercise equipment’ and the ‘exercise training’ services in question, that is indoor cycling.

In 2016 the Fifth Board of Appeal of the EUIPO revoked Mad Dogg Athletics’ rights to the word mark SPINNING for goods and services in Classes 28 (exercise equipment) and 41 (exercise training). The Board established that the word 'spinning’ had indeed become generic for a certain type of ‘exercise training’ and for the ‘exercise equipment’ used for that training in the Czech Republic.

Mad Dogg Athletics subsequently brought an action for annulment of the decision before the General Court of EU. It made four claims in light of the contested decision, namely error of law as regards to:

• The date to be taken into account,
• The relevant territory to be taken into account,
• The relevant public to be taken into account,
• The incorrect assessment of evidence.

For the purpose of this post, the analysis will exclude the final complaint relating to the assessment of evidence.

The decision

The date to be taken into account 

The applicant submitted that the Fifth Board of Appeal had infringed Article 51(1)(b) of the EU Trade Mark Regulation, by considering that the relevant time for assessing the ground for revocation was the date on which the claimant filed its application for revocation of the contested mark. In the appellant’s view, the relevant time for assessing whether the contested mark had turned into a common name would be the date when the revocation decision responding to that application was filed. 

However, the General Court stated that, contrary to the applicant’s assertions, it follows from Article 51 of the Trade Mark Regulation that the applicability of the ground for revocation must be examined in light of the factual and legal context at the latest on the date of filing the application for revocation. 

Relevant territory to be taken into account 

One of the key points in this judgment is whether a revocation decision concerning a EU trade mark has binding force for the whole of the territory of the EU. 

The General Court held that where it is established that a EU trade mark has lost all distinctive character in a single Member State, then that mark is no longer capable of producing the effects envisaged by the EU Trade Mark Regulation. It is therefore sufficient that the mark has become the common name for the goods or services in respect of which it was registered in a single Member State for its proprietor’s rights to be revoked in respect of the whole of the EU. This reasoning is also in line with the unitary character of a EU trade mark, that is to provide uniform protection and produce the same effects throughout the entire EU (Recital 4 and Article 1(2) of the of the EU Trade Mark Regulation). 

The relevant public to be taken into account 

The second key point in this judgment is the relevant public that should be considered. The General Court took a different view from what the Fifth Board of Appeal had done on the matter concerning which consumers should be taken into account in assessing the ground for revocation. 

According to the General Court, the assessment should not exclude commercial operators. It is clear that in many cases the indoor cycles marketed by Mad Dogg Athletics are purchased by commercial operators of gyms, sports facilities, and rehabilitation facilities. [Obviously, several judges at the General Court regularly attend the gym in order to know this] It is indeed those commercial operators who – in the context of providing exercise training services – make cycles available to their own customers in order to enable them to practise sporting activities using those indoor cycles. Therefore, the commercial operators have a central role in the market on exercise equipment. They also have a decisive influence on the selection made by end users. 

Furthermore, the Board’s decision had failed to consider how the trade mark SPINNING was perceived by professional customers. In this regard, the Board should have considered also that public in the assessment of the revocation of the trade mark. 

Hence, that error of assessment in defining the relevant public (shockingly) had impaired the contested decision in its entirety and, accordingly, would justify its annulment.