On the 8th of November 2018, the General Court of the Court of Justice of the European Union (“CJEU”) annulled a decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) concerning the revocation of the European Trademark “spinning” (“Spinning Mark”) which was claimed to have become a common mark.
The decision was provided in the context of revocation proceedings originally instituted by the company Aerospinning Master Franchising s.r.o. against the registration of the Spinning Mark by Madd Dogg Athletics Inc in Classes 28 (exercise equipment) and 41 (exercise training).
The EUIPO, at Cancellation Division stage and on appeal, had ruled in favor of the revocation. Madd Dogg Athletics Inc (“Applicant”) appealed before the CJEU on the basis of 4 main complaints, namely an error of law with regards to:
- The relevant date for assessing whether the Spinning Mark had become a common word;
- The relevant territory to be taken into account for assessing the ground for revocation; and
- The relevant public to be taken into account for assessing the ground for revocation; and
An error with regards to the assessment of evidence.
1.Relevant Date for Assessing whether the Spinning Mark had become a Common Word
The Applicant submitted that the relevant date for assessing whether a word mark has become a common mark is the date on which the revocation decision becomes res judicata,that is, when the decision is delivered and final. As expected, the CJEU did not uphold this complaint and ruled that such a ground for revocation must be examined in the light of the factual and legal context applicable on the date of the filing of the application for revocation.
The CJEU also added that only circumstances which took place prior to the filing on an application for revocation may be taken into account for the purposes of determining the relevant point in time for genuine use
The CJEU also added that facts arising after the date of the application for revocation cannot be taken into account, unless, for the purposes of making it possible to better assess circumstances arising or prevailing before the date of application for revocation.
2. The Relevant Territory to be taken into account for Assessing the Ground for Revocation
The Applicant submitted that a decision for revocation cannot be based solely on a single Member State if the contested mark has a reputation. Again, as expected, the CJEU did not welcome t his complaint. The CJEU held that if a European Trademark (“EUTM”) loses its distinctive character in one Member State, then the EUTM must be revoked across all of the EU, effectively re-asserting the long-standing concept of unitary effect of EUTMs.
3. The Relevant Public to be taken into account for Assessing the Ground for Revocation
The Applicant also complained that the EUIPO had not taken into account the relevant public properly, when making its determination as it took into account the perception of end-users and not of professionals. It was this complaint which swayed the CJEU in favor of the Applicant.
The relevant public whose views must be taken into account in determining whether the contested mark has become a common name must be defined in light of the characteristics of the market for that product or service. In the present case, more than 95% of the Applicant’s products sold under the Spinning Mark (indoor cycles) were sold to professional customers.
Accordingly, the CJEU found that there was an error of law by the EUIPO having failed to take into consideration the perception of professionals. This error vitiated the EUIPO’s decision in its entirety and thus the CJEU annulled the EUIPO’s decision (without going into the merits of a wrong assessment of evidence).
Article by Dr Terence Cassar and Dr Bernice Saliba.
Disclaimer: This article is not intended to impart legal advice and readers are asked to seek verification of statements made before acting on them.