On the 21st of July 2014 the Cancellation Division handed down the initial decision in the case Aeropinning Master Franchising Let v Mad Dogg Athletics, Inc. In their opinion the word ‘spinning’ has become a generic word to describe group indoor cycling sessions and is no longer a valid trade mark. This decision is actively under appeal to the Board of Appeal.

The trademark mark ‘SPINNING’ was registered in April 2000 to Mad Dogg Athletics Inc. The applicant, Aerospinning Master Franchising Ltd, based their application on Article 51(1)(b) of the Community Trademark Regulation. Article 51(1)(b) provides for the cancellation of a Community Trade Mark (CTM) where the trade mark has become the common name in trade for the product in against which it is registered. Crucially, the trade mark must have become generic as a result of acts or inactivity on the part of the trademark owner. Accordingly two points must be proven; both that the trade mark has in fact become the ‘common name in trade for the product’ and that the proprietor was responsible for this result due to their actions or inactions.

The Opposition Division held that the applicant must prove that at least part of the relevant public in the EU considers the CTM generic. The application was based on the distinctiveness of the mark in the Czech Republic. The relevant public for the assessment of whether the mark had become generic was therefore the Czech speaking part of the Union. The Opposition Division found that a substantial part of the relevant Czech market, including both consumers and traders, perceive the word ‘spinning’ as a generic term referring to a type of exercise training and related equipment. OHIM concluded that the trade mark ‘spinning’ is no longer an indication of commercial origin and is in fact the common name in trade for the goods and services in question.

On the second point, the court found that the perception of the trade mark as a generic term could be attributed to a failure on the part of Mad Dogg Athletics Inc. to effectively safeguard their rights. OHIM acknowledged that a CTM proprietor cannot be required to bankrupt itself in order to maintain its exclusive rights but nevertheless found that the CTM proprietor had failed in its duties. In particular they focused on the fact that the proprietor had failed to ensure that its licensees did not use the mark as a generic term and had only acted to defend the mark when infringements were brought to its attention in adversarial proceedings. The Opposition Division also pointed out the extensive policing by the proprietor of the German and British markets to safeguard the trade mark in those jurisdictions. They concluded that the CTM proprietor chose not to invest in the enforcement of its brand in the Czech Republic.

The Cancellation Division thus decided that the trade mark ‘SPINNING’ is no longer valid for exercise equipment in Class 28 and exercise training in Class 41 of the Nice Classification. This decision has been appealed, and the Board of Appeal’s decision will be subject to further appeal. It will be particularly interesting to see how the Board of Appeal deals with the issue of the perception of the trade mark in the European Union as a whole, given that the cancellation application related only to the Czech speaking public of the union.