European Union: SPINNING Out Of Control?

Last Updated: 15 November 2018
Article by Oliver Gray and Clare Mann

Gym-goers in the United Kingdom have become well acquainted with "spinning" classes in recent years, and most consumers will be familiar with the concept of a group of fitness fanatics pedalling away to a heavy beat on exercise bikes, under the watchful oversight of an instructor. However, the owner of the registered trade mark SPINNING will have been working up a sweat over more than just strenuous exercise in the run up to the General Court's judgement on 8 November 2018 regarding the validity of that trade mark registration.

Since 3 April 2000, SPINNING has been registered as an EU trade mark in respect of exercise equipment in Class 28 and exercise training in Class 41 in the name of Mad Dogg Athletics, Inc. From a UK perspective, this is somewhat surprising, because a sign is not eligible for registration as a trade mark to the extent that it is customary in the current language or in the bona fide and established practices of the trade (section 3(1)(d) Trade Marks Act 1994/Article 7(1)(d) EUTMR). However, as "spinning" classes are a relatively modern cultural phenomenon, it is likely that the mark SPINNING would not have stood out as being customary in the language of the trade in April 1996, when the EU trade mark application was filed.

Just as a sign which is customary in the language of the trade cannot be registered, a registered EU trade mark can be revoked if, following registration, the trade mark has become the common name in the trade for a product or service in respect of which it is registered, on account of the acts or inactivity of the trade mark owner (section 46(1)(c) Trade Marks Act 1994/Article 58(1)(c) EUTMR). Given how common "spinning" classes are today, it is perhaps not surprising that Mad Dogg Athletics' registration for SPINNING was attacked on these grounds by Aerospinning Master Franchising s.r.o. By way of background information, Aerospinning's decision to apply for the revocation of Mad Dogg Athletics' EUTM registration was in response to trade mark infringement proceedings brought by Mad Dogg Athletics against Aerospinning in the Czech Republic.

In the initial revocation proceedings before the EUIPO's Cancellation Division, Aerospinning submitted evidence that the mark SPINNING had become the common name in the trade in respect of exercise equipment in Class 28 and exercise training in Class 41 in the Czech Republic. As part of these proceedings, the parties disputed who the relevant public was for determining whether a mark had become a common name. Mad Dogg Athletics argued that the relevant public was made up of specialist consumers with a high level of knowledge of the exercise equipment industry. The significance of this is that specialist consumers will pay more attention when purchasing goods and services, and they will be more readily able to recognise where a mark is functioning as an indication of commercial origin, rather than simply describing the goods and services in question. That is to say, if the relevant public were specialists, Mad Dogg Athletics would be more easily able to argue that their mark SPINNING was validly registered as an EU trade mark. Aerospinning disputed this interpretation of the relevant public. For them, the relevant public were general gym-goers and end-users of the exercise bikes, who would not recognise the word SPINNING as an indication of commercial origin, but rather as a description of the exercise equipment and exercise training services in question.

The EUIPO's Cancellation Division agreed with Aerospinning. The relevant public was the end-user of the exercise equipment in the Czech Republic, who would not be aware that SPINNING is intended to function as an indication of commercial origin. The Cancellation Division revoked the trade mark registration.

The Cancellation Division's decision was upheld by the Board of Appeal, which concurred with the Cancellation Division's assessment of the average consumer. However, relief came for Mad Dogg Athletics on second appeal to the General Court. In response to a question from the Court, Mad Dogg Athletics disclosed that its exercise bikes were primarily sold to the commercial operators of gyms, sports facilities, and rehabilitation facilities, i.e. to specialist consumers. Indeed, 95% of the registrant's sales were to such customers. In light of this information, the Court held that "...those operators play a central role on the 'exercise equipment' market and... they have a decisive influence on the selection, by end users, of 'exercise training' services. Through their knowledge of the contested mark's function as an indication of origin, those operators thus enable the process of communication between providers and end users of those services to be successfully carried out..." On this basis, the General Court overturned the revocation of the mark in relation to exercise equipment and exercise training.

The General Court's decision comes as something of a surprise to the writer. Firstly, the decision goes against the general thrust of EU case law, in which the Court tends to hold that where the relevant public comprises both lay consumers and specialist consumers, it will generally be the perception of the least sophisticated consumers which is paramount in establishing whether a mark has become customary in the language and practice of the trade. The Court has also left a hole in its reasoning. After establishing that the relevant consumers are specialists, the Court proceeded to conclude that those specialists would know that the mark SPINNING functions as an indicator of origin. It is not clear what led the Court to that conclusion. Nevertheless, the decision shows how significant it can be in trade mark proceedings to show that the consumers of goods or services are sophisticated and specialist. It would appear that, in the General Court's view, this alone can be sufficient to save a registered mark which, at least to the average UK consumer, is likely to be seen as wholly descriptive of the goods and services in respect of which it is registered. Perhaps Aerospinning should have considered filing evidence to demonstrate that the mark SPINNING had become common in the trade in more EU countries than just the Czech Republic.

Aside from the Court's assessment of the relevant public, there is an implicit 'health warning' in these proceedings for all holders of EU trade marks, namely that where a registered EU trade mark has become customary in the language of the trade in one member state, this will be sufficient for a third party to seek revocation of the entire EU trade mark. Whilst it would be possible for the trade mark holder to convert its EU trade mark into a series of individual national rights in those member states where the ground for revocation did not apply, this would be a costly and time-consuming process for the trade mark holder.

It remains to be seen whether the General Court's decision is appealed to the Court of Justice. Gyms throughout the EU which refer to their indoor cycling classes as SPINNING classes, but do not have authorisation from Mad Dogg Athletics to do so, will be hoping that it is.

SPINNING Out Of Control?

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Dehns
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Dehns
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions