Judgments nº T-718/16 of Tribunal General de la Unión Europea, November 08, 2018

• Resolution Date: November 08, 2018
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-718/16

(EU trade mark - Revocation proceedings - EU word mark SPINNING - Partial revocation - Article 51(1)(b) of Regulation (EC) No 207/2009 (now Article 58(1)(b) of Regulation (EU) 2017/1001))

In Case T-718/16,

Mad Dogg Athletics, Inc., established in Los Angeles, California (United States), represented by J. Steinberg, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,

defendant,

the intervener before the General Court, formerly Aerospinning Master Franchising, Ltd., s.r.o., the other party to the proceedings before the Board of Appeal of EUIPO, being

Aerospinning Master Franchising, s.r.o., established in Prague (Czech Republic), represented by K. Labalestra, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 21 July 2016 (Case R 2375/2014-5), relating to revocation proceedings between Aerospinning Master Franchising and Mad Dogg Athletics,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, K. Kowalik-Bańczyk and C. Mac Eochaidh (Rapporteur), Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 4 October 2016,

having regard to the response of EUIPO lodged at the Court Registry on 17 March 2017,

having regard to the response of the intervener lodged at the Court Registry on 24 March 2017,

further to the hearing on 15 March 2018,

gives the following

Judgment

Background to the dispute

1 On 1 April 1996 the applicant, Mad Dogg Athletics, Inc., filed an application for registration of the word mark SPINNING (‘the contested mark’) with the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 On 3 April 2000 the contested mark was registered in respect of goods and services in Classes 9, 28 and 41 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponding, for each of those classes, to the following description:

- Class 9: ‘Audio and video cassettes’;

- Class 28: ‘Exercise equipment’;

- Class 41: ‘Exercise training’.

3 On 8 February 2012 the intervener, Aerospinning Master Franchising, s.r.o., filed an application for partial revocation of the contested mark pursuant to Article 51(1)(b) of Regulation No 207/2009 (now Article 58(1)(b) of Regulation 2017/1001). That application concerned the goods in Class 28 and the services in Class 41.

4 On 21 July 2014 the Cancellation Division revoked the applicant’s rights in their entirety.

5 On 12 September 2014 the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

6 By decision of 21 July 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO annulled the decision of the Cancellation Division in part in so far as it concerned the goods in Class 9, even though those goods were not the subject matter of the application for partial revocation filed by the intervener. On the basis of Article 51(1)(b) of Regulation No 207/2009, the appeal was dismissed as to the remainder. In that regard, first, the Board of Appeal stated, in paragraphs 23 to 27 of the contested decision, that the grounds for revocation had to be assessed as at the date of filing of the application for revocation. Second, in paragraphs 28 to 33 of the contested decision, it considered that the supposed transformation of the contested mark into a common name for the goods and services at issue had to be examined by taking into account the perception of Czech end users. Accordingly, it refused to examine the evidence to the contrary submitted by the applicant concerning its activities defending its trade mark in Member States other than the Czech Republic. Third, in paragraphs 34 to 47 of the contested decision, the Board of Appeal considered that the evidence which had been submitted during the course of the proceedings proved that the term ‘spinning’ had become, in the Czech Republic, the common name for a type of ‘exercise training’ and for the ‘exercise equipment’ used for that training. Fourth, in paragraphs 48 to 56 of the contested decision, it considered that the fact that the contested mark had become a common name was due to insufficient activity by the applicant to protect its trade mark in the Czech Republic. Fifth, in paragraphs 57 to 61 of the contested decision, it considered that several decisions of the Úřad průmyslového vlastnictví (Office of Industrial Property, Czech Republic) and the Czech courts confirmed that the applicant had not been sufficiently vigilant and had not made reasonable efforts to protect its trade mark in the Czech Republic.

Forms of order sought

7 The applicant claims that the Court should:

- annul the contested decision in so far as it has revoked the contested mark in respect of ‘exercise equipment’ in Class 28 and ‘exercise training’ in Class 41;

- order EUIPO to pay the costs.

8 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

9 The intervener contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

10 In support of its action the applicant relies on, in essence, three pleas in law alleging infringement of (i) Article 51(1)(b) of Regulation No 207/2009, (ii) Article 41(2)(a) of the Charter of Fundamental Rights of the European Union and (iii) Article 41(2)(c) of the Charter of Fundamental Rights.

11 The first plea is based, in essence, on four complaints, the first, second and third alleging errors of law as regards the relevant date to be taken into account for the purposes of assessing the ground for revocation, the relevant territory to be taken into account for the purposes of assessing the ground for revocation and the relevant public to be taken into account for the purposes of assessing the ground for revocation, respectively, and the fourth alleging an incorrect assessment of the evidence.

First complaint of the first plea in law, alleging an error of law as regards the relevant date to be taken into account for the purposes of assessing the ground for revocation

12 The applicant submits, in essence, that the Board of Appeal infringed Article 51(1)(b) of Regulation No 207/2009 by considering that the relevant time for assessing the ground for revocation was the date on which the intervener filed its application for revocation of the contested mark. In the applicant’s view, the relevant time for assessing whether the contested mark has transformed into a common name is not the date on which the application for revocation is filed but the date on which the revocation decision responding to that application, which has the force of res judicata, is adopted. According to the applicant, the ground for revocation must still apply at the time when the revocation decision is adopted.

13 EUIPO and the intervener dispute those arguments.

14 In that regard, in the first place, it should be noted that Article 55(1) of Regulation No 207/2009 (now Article 62(1) of Regulation 2017/1001) provides:

‘The EU trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation, to the extent that the rights of the proprietor have been revoked. An earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties’.

15 As the Board of Appeal correctly stated in paragraph 24 of the contested decision, in the event of the revocation of an EU trade mark, that revocation is effective as from the date of the application for revocation or, at the request of one of the parties, an earlier date on which one of the grounds for that revocation occurred.

16 By contrast...