The rights of the owner of an EU trademark can be revoked if the mark has become a common name even if in only one member state, the General Court has recently affirmed.

EU law makes provision for a number of exclusive rights which a trademark owner is entitled to enjoy over the said mark should the latter be successfully registered as an EU mark with the EU Intellectual Property Office (EUIPO). The protection given to a trademark owner via the registration of a mark as an EU mark extends to all the territory of the EU and can never be limited to a single member state or some of them.

The same EU law also makes provision for the revocation of such rights if certain conditions subsist. One such condition relates to the fact that the trademark has become the common name in the trade for the product or service for which it is registered. This would mean that the mark would have lost its distinctive character which is a sine qua non condition for the registration of the mark in the first place.

The facts of this case were briefly as follows. An American company enjoys exclusive rights over the EU word mark ‘spinning’ for audio and video cassettes, exercise equipment and exercise training services. This mark was registered as an EU mark by the said company in the year 2000. In 2012, a Czech company filed an application with the EUIPO for the revocation of the rights of the proprietor of this mark on the basis that the mark had become the common name for the exercise equipment and the exercise training services in question.

The EUIPO accepted the claim and revoked the American company’s rights in connection with the trade mark ‘spinning’ in respect of the goods and services indicated by the Czech company. The EUIPO concluded that the term ‘spinning’ had become, in the Czech Republic, the common name for a type of ‘exercise training’, and of ‘exercise equipment’ used for that training, namely indoor cycles. This, therefore, meant that the exclusive right to use that term as an EU trade mark could no longer be granted to economic operators. The American company sought to annul the decision of the EUIPO before the General Court.

Exclusive rights which a trademark owner is entitled to enjoy

The General Court maintained that where it is established that an EU trade mark has lost all distinctive character in a limited part of the territory of the EU or, even in a single Member State, this means that the mark can no longer be afforded protection in terms of EU law. It is therefore sufficient for the mark to 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.

The Court then focused on which type of public the EUIPO ought to have taken into consideration in order to assess whether the mark in question had actually become a common name in the specific market in question. It concluded that the EUIPO had erroneously taken into consideration only end users of ‘exercise equipment’ and excluded professional customers in arriving at its decision to revoke the registration of the mark in question. The Court observed that, in the vast majority of cases, the indoor cycles marketed by the American company under the trade mark ‘spinning’ were purchased by commercial operators of gyms, sports facilities and rehabilitation facilities.

In turn, such commercial operators, in the context of providing ‘exercise training’ services, make the cycles available to their own customers in order to enable them to practise, in a group, sporting activity using those indoor cycles. Such commercial operators therefore play a central role on the ‘exercise equipment’ market.

The Court concluded that in its decision to revoke the registration of the mark in question, the EUIPO should therefore have also taken into consideration the perception of the trade mark ‘spinning’ by professional customers as well as their opinion as to whether the contested mark had indeed become a common name for the goods and services in question.

On the basis of this conclusion, the General Court then proceeded to annul the decision of the EUIPO. The advantages of registering a mark as an EU mark are multiple and this mainly due to the unitary character of this type of registered mark, which affords protection of the same mark in multiple jurisdictions at the same time. However, as this judgment goes to show, the disadvantages arising from this same unitary character, cannot be underestimated should one of the trigger factors for revocation or invalidity of registration subsist.

Mariosa Vella Cardona, M’Jur, LL.D., is a freelance legal consultant specialising in European law, competition law, consumer law and intellectual property law.

mariosa@vellacardona.com

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