According to a recent judgment of the General Court of the European Union (GCEU), a European Union Trade Mark has to be revoked in its entirety already if it has become the common name of a product or service in only one EU Member State (GCEU, judgment of November 8, 2018, T-718/16 Mad Dogg Athletics v. EUIPO/Aerospinning Master Franchising [“SPINNING”]).
According to Art. 51 (1) (b) of Regulation No 207/2009 (Community Trade Mark Regulation, CTMR), which corresponds to Art. 58 (1) (b) of present Regulation No. 2017/1001 (European Union Trade Mark Regulation, EUTM), a Community Trade Mark/European Union Trade Mark has to be revoked upon third party application if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered. The case at hand concerned such a request for revocation launched against the EUTM “SPINNING”, registered for, inter alia, “exercise equipment” in class 28. The Cancellation Division of the EUIPO as well as the Board of Appeal found 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. Moreover, both considered that the fact that the contested mark had become a common name was due to insufficient activity by its proprietor to protect its mark in the Czech Republic.
In the subsequent proceedings before the General Court, the trade mark proprietor argued that, for legal as well as fairness reasons, a European Union Trade Mark cannot be revoked if the respective ground for revocation exists for the territory of only one of the 28 EU Member States. The court, however, explicitly dismissed this line of argumentation. It stressed that the unitary character of the EU trade mark is the basic legal principle underpinning the entire legal framework. According to the court, that principle implies, in particular, that an EU trade mark is, at the time of its registration, distinctive throughout the European Union, and retains that distinctive character by not becoming, in even a limited part of the European Union or, as the case may be, in a single Member State, the common name in the trade for the goods and services in respect of which it was registered. Consequently, the GCEU confirmed EUIPO’s findings that, upon application by a third party, an EUTM has to be revoked entirely if the applicant proves the requirements of Art. 51 (1) (b) CTMR (now: Art. 58 (1) (b) EUTMR) for the territory of only one EU Member State.
Even if a trade mark has become the common name for the product/service concerned, an application for revocation will be dismissed if its proprietor actively tried to prevent this development by enforcing its mark against third party’s use. However, in view of the fact that such enforcement activities incur significant costs, many EUTM holders focus only on the most important core markets and typically neglect third-party activities in markets of minor economic interest. This – economically reasonable – approach might now endanger a European Union Trade Mark’s validity as a whole. While it might not be necessary to challenge each and every third-party infringement in court proceedings all over Europe, a diligent EUTM owner should at least become active if such unauthorized use activities evoke the impression of a descriptive or generic content of the protected sign.