Fight Over ‘Spinning’ Trademark Revived in EU

(CN) – Reviving a trademark dispute over the Spin class fitness craze, the European General Court ruled Thursday that authorities must consider input from gym operators, not just the perceptions of the general public.

The case arose in 2012 when a Czech company called Aerospinning Master Franchising applied with the European Union Intellectual Property Office to revoke the trademark for Spinning registered back in 2000 by Los Angeles-based Mad Dogg Athletics.

Competing with equipment used by other operations like SoulCycle and Flywheel, Mad Dogg contends that indoor cycling cannot be referred to as Spinning unless done without its specific bikes.

In Europe, however, the European Union Intellectual Property Office agreed with Aerospinning that the term had become a generic name for exercise training, no longer worthy of protection.

After the office deregistered the Spinning mark, Mad Dogg appealed to the European General Court in 2016.

Based in Luxembourg, that court ruled Thursday that underlying ruling must be annulled because of an error of assessment that “vitiates the contested decision in its entirety.”

The error was that the trademark authorities focused on what the general population of the Czech Republic thinks about “spinning,” despite evidence that 95 percent of Mad Dogg’s sales of indoor cycles went to gym operators, rehabilitation facilities or other professional customers.

Indeed because these cycles cost so much, the court agreed that “indoor cycles are rarely purchased by individuals.”

“In view of those factors, the Board of Appeal was wrong to exclude the perception of professional customers as regards ‘exercise equipment’ from its analysis in order to assess whether the contested mark had become the common name in the trade for the ‘exercise equipment’ in respect of which it was registered,” the ruling states. “Accordingly, the Board of Appeal made an error of assessment in defining the relevant public as regards the market for ‘exercise equipment’ in Class 28 by failing to take account of the perception of professional customers operating on that market.”

The ruling notes that there is no mention in the underlying decision about how professional customers perceive the term “spinning.”

“It must therefore be found, first, that those operators play a central role on the ‘exercise equipment’ market and, second, that they have a decisive influence on the selection, by end users, of ‘exercise training’ services,” the ruling states. “Through their knowledge of the contested mark’s function as an indication of origin, those operators thus enable the process of communication between providers and end users of those services to be successfully carried out.”

Konrad Gatien, an attorney for Mad Dogg with the Beverly Hills firm KeatsGatien, called it astonishing that the lower court had failed to consider the relevant public in its ruling.

“Mad Dogg created the brand Spinning for indoor cycling over 25 years ago, and it has become a worldwide phenomenon,” Gatien said in an email. “Along the way, Mad Dogg has assiduously promoted and protected its brand to ensure consumers associate its Spinning brand only with Mad Dogg and its certified and licensed Spinning indoor cycling instructors.  While some misuse of the term has occurred from time to time, Mad Dogg has addressed it.  In sum, we have found that such improper use is quite often innocent, and is attributable to a natural preference for calling a good or service by its popular, trademarked name, rather than the generic name — in this case indoor cycling.  It probably comes as no surprise that Mad Dogg’s plight is shared with other major brands such as Kleenex, Xerox, Band-Aid, Google, and Thumbdrive.  In such instances, it is important to remember the well-recognized rule that where the relevant public understands and recognizes the brand name as a trademark, the trademark owner has done its job in protecting its rights and is entitled to prevail.”

Mad Dogg limited its challenge to protection of the term with regard to “exercise equipment” and “exercise training,” so the General Court said it would not vacate the ruling with respect to “audio and video cassettes,” which Mad Dogg had also registered in 2000.

Mad Dogg CEO John Baudhuin applauded Thursday’s decision.

“The court’s ruling reflects our ongoing effort to protect the Spinning brand from competitors and counterfeiters that seek to trade off of the trust, reputation and goodwill that we have established with Spinning customers worldwide,” Baudhuin said in a statement. “As the original and most recognized indoor cycling brand, we appreciate the loyalty that our customers have shown us over the past 25 years and will continue to protect our family of Spin, Spinning and Spinner trademarks against unauthorized use by imitators and infringers.”

%d bloggers like this: