December 1, 2014
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EUROPEAN UNION: OHIM Cancels Registration for SPINNING
On February 7, 2012, the Czech company Aerospinning Master Franchising filed an application for revocation of the registration for the word mark SPINNING, registered on April 3, 2000, in the name of the U.S. company Mad Dogg Athletics. Aerospinning Master Franchising Ltd. v. Mad Dogg Athletics, Inc., No. 6281 C (July 21, 2014).
The application was based on Article 51(1)(b) CTMR, for which two conditions need to be met: first, it must be objectively established that the mark has become the common name in the trade for the product or service in respect of which it is registered; second, this loss of distinctive character must have occurred in consequence of acts or inactivity of the proprietor.
Since the perception of consumers or end users plays a decisive role in assessing the first requirement, the OHIM Cancellation Division first determined which consumers comprise the relevant market. The applicant focused its evidence on the distinctiveness of the mark in the Czech Republic. Consequently, the Cancellation Division ruled that the relevant public consisted of the Czech-speaking part of the Union. Subsequently, the Cancellation Division found that a substantial part of the relevant Czech market does not perceive the term “spinning” as an indication of origin. Indeed, based on the evidence provided and on earlier findings of the Czech Industrial Property Office (Czech IPO) on substantially the same question, the Cancellation Division concluded that, in the Czech market, “spinning” is generically used to refer to a type of exercise training and related equipment.
Therefore, the Cancellation Division found that SPINNING had become the common name in the trade in the Czech market as a type of exercise training and the exercise equipment used in this training.
In assessing the second requirement, the Cancellation Division determined that Mad Dogg Athletics failed to ensure that its licensees did not use the mark as a generic term. In addition, Mad Dogg Athletics only enforced and defended the mark when infringements were brought to its attention in adversarial proceedings. The Cancellation Division was of the opinion that Mad Dogg Athletics did not proactively protect the mark but merely retroactively defended it. The decisions of the Czech IPO and the Czech community trademark courts (in relation to infringement proceedings between the same parties) both supported this opinion.
Therefore, the Cancellation Division found that the evidence suggested that Mad Dogg Athletics failed to vigilantly protect the mark when it could easily have done so. In that regard the Cancellation Division ruled that the mark’s loss of distinctive character could be attributed to Mad Dogg Athletics’ failure to act.
For the above reasons, the Cancellation Division concluded that the application for revocation was successful and that SPINNING should be declared invalid for exercise equipment in Class 28 and exercise training in Class 41 of the Nice Classification.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
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