JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
6 July 2022 (*)
(EU trade mark – Revocation proceedings – EU word mark SPINNING – Trade mark which has become the common name in the trade for a product or service in respect of which it is registered – Article 51(1)(b) of Regulation (EC) No 207/2009 (now Article 58(1)(b) of Regulation (EU) 2017/1001) – Relevant public)
In Case T‑246/20,
Aerospinning Master Franchising s. r. o., established in Prague (Czech Republic), represented by K. Labalestra, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Mad Dogg Athletics, Inc., established in Venice, California (United States), represented by J. Steinberg, lawyer,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and T. Perišin, Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the request for a hearing submitted by the applicant within three weeks after service of notification of the close of the written part of the procedure,
having regard to the letter by which the applicant withdrew its request for a hearing and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
having regard to the questions put by the Court and the parties’ replies to those questions,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Aerospinning Master Franchising s. r. o., seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 February 2020 (Case R 369/2019‑4), relating to revocation proceedings between itself and the intervener, Mad Dogg Athletics, Inc. (‘the contested decision’).
Background to the dispute
2        On 1 April 1996, the intervener filed an application for registration of an EU trade mark with 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)). Registration as a mark was sought for the word sign SPINNING.
3        On 3 April 2000, the mark applied for was registered as an EU trade mark 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, corresponding, for each of those classes, to the following description:
–        Class 9: ‘Audio and video cassettes’;
–        Class 28: ‘Exercise equipment’;
–        Class 41: ‘Exercise training’.
4        On 7 February 2012, the applicant 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 and the applicant submitted evidence relating primarily to the distinctiveness of the contested mark in the Czech Republic (see paragraph 13 of the contested decision).
5        On 21 July 2014, the Cancellation Division upheld the application for revocation and revoked the intervener’s rights in respect of the contested mark in their entirety.
6        On 12 September 2014, the intervener filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
7        By decision of 21 July 2016, the Fifth Board of Appeal of EUIPO annulled the Cancellation Division’s decision in part in so far as it related to the goods in Class 9, even though those goods were not the subject matter of the application for partial revocation filed by the applicant. The appeal was dismissed as to the remainder on the basis of Article 51(1)(b) of Regulation No 207/2009.
8        By application lodged at the Court Registry on 4 October 2016, the intervener brought an action against the decision of 21 July 2016, an action which was registered as Case T‑718/16.
9        By judgment of 8 November 2018, Mad Dogg Athletics v EUIPO – Aerospinning Master Franchising (SPINNING) (T‑718/16, EU:T:2018:758), the Court annulled the decision of 21 July 2016 in so far as it concerned the goods in Class 28 and the services in Class 41. More specifically, the Court held that the Board of Appeal had 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 (judgment of 8 November 2018, SPINNING, T‑718/16, EU:T:2018:758, paragraph 61). In that context, the Court stated, first, that professionals, such as, inter alia, operators of gyms, sporting facilities and rehabilitation facilities, who acted as buyers of the goods in Class 28, played a central role on the ‘exercise equipment’ market and, secondly, that they had a decisive influence on the selection, by end users, of ‘exercise training’ services in Class 41 (judgment of 8 November 2018, SPINNING, T‑718/16, EU:T:2018:758, paragraphs 63 and 64). According to the Court, that error of assessment in defining the relevant public vitiated the decision of 21 July 2016 in its entirety and, accordingly, justified its annulment (judgment of 8 November 2018, SPINNING, T‑718/16, EU:T:2018:758, paragraph 65). However, the Court stated that the effects of the decision of 21 July 2016 had to be maintained in so far as it concerned the goods in Class 9 covered by the contested mark (judgment of 8 November 2018, SPINNING, T‑718/16, EU:T:2018:758, paragraph 66).
10      Following the delivery of the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758), the case was remitted to the Fourth Board of Appeal under the reference number R 369/2019‑4.
11      By decision of 26 February 2020, the Fourth Board of Appeal annulled the Cancellation Division’s decision which had been contested before it, rejected the application for revocation in its entirety and ordered the applicant to pay the costs incurred for the purposes of the cancellation and appeal proceedings before EUIPO.
12      More specifically, the Fourth Board of Appeal found, first, that the evidence submitted by the applicant was insufficient to establish that the mark SPINNING had, at the time when the application for revocation in question was filed, become a common name in the Czech Republic for the goods in Class 28 and the services in Class 41 (paragraph 27 of the contested decision). Secondly, and in any event, it found that the evidence provided was also insufficient to establish that the alleged loss of distinctive character of the contested mark was, for the purposes of the applicable provisions in the present case, due to acts or inactivity of the intervener (paragraph 59 of the contested decision).
Forms of order sought
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
14      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The determination of the regulation which is applicable ratione temporis
15      Given the date on which the application for revocation in question was filed, namely 7 February 2012, which is decisive for the purposes of identifying the applicable substantive law, the present case is governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 6, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3).
16      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Fourth Board of Appeal in the contested decision and by the parties in the arguments they have put forward to Article 58(1)(b) of Regulation 2017/1001 must be understood as referring to Article 51(1)(b) of Regulation No 207/2009, which is substantively identical.
17      Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
Substance
18      In support of its action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 51(1)(b) of Regulation No 207/2009.
19      The applicant also submits observations as regards, first, the origins of the mark SPINNING and its alleged good faith in using that mark, secondly, its argument that it is ‘also’ pursuing the revocation proceedings at issue ‘in the public interest’ and, thirdly, the consequences of the revocation of the contested mark for the intervener.
The single plea, alleging infringement of Article 51(1)(b) of Regulation No 207/2009
20      The single plea put forward by the applicant is divided into three parts.
21      By the first part, the applicant complains that the Fourth Board of Appeal incorrectly defined the relevant public by taking into account only the perception of professional operators of fitness centres and rehabilitation facilities in the Czech Republic and by finding that the perception of end users and consumers was irrelevant.
22      By the second part, the applicant complains that the Fourth Board of Appeal erred in finding, in the contested decision, that it had failed to establish inactivity on the part of the proprietor of the contested mark for the purpose of Article 51(1)(b) of Regulation No 207/2009.
23      Lastly, by the third part, the applicant complains, in essence, that the Fourth Board of Appeal made errors in the assessment of the evidence which had been submitted to it in order to establish that the mark to which the application for revocation related had become the common name in the trade for a product or service in respect of which it was registered.
–       The first part, relating to the relevant public
24      According to the applicant, the Fourth Board of Appeal misread the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758). The applicant submits that, in that judgment, the Court did not criticise the Fifth Board of Appeal for having taken into account how end users and consumers perceived the contested mark, but only for not having also taken into account the perception of professionals in the sectors concerned.
25      Relying on the judgment of 29 April 2004, Björnekulla Fruktindustrier (C‑371/02, EU:C:2004:275), and the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758), the applicant claims that it is true that, under certain conditions, depending on the characteristics of the market concerned, no conclusion as regards whether a trade mark has been transformed into a generic name can be drawn exclusively by taking into account the perception of end users and consumers. However, it submits that it does not follow from that case-law that the perception of those end users and consumers should not be taken into consideration in a situation such as that in the present case.
26      It argues that, by wrongly excluding end users and consumers from the relevant public, the Fourth Board of Appeal not only erred in law, but also failed to take into account various items of evidence submitted by the applicant. The applicant states that it reasonably expects the Court to annul the contested decision, since ‘any other approach would infringe the principle of equity, the requirement that decisions be predictable and the equality of the parties’.
27      Furthermore, according to the applicant, the Fourth Board of Appeal erred in excluding from the professional section of the relevant public sellers of stationary bikes, who are distributors of bikes to fitness centres and rehabilitation facilities as well as to individuals. The applicant submits that the same is true of hotels, companies, community centres and sports clubs. It argues that those various entities are part of the professional section of the relevant public and that the Board of Appeal erred in finding, in paragraph 47 of the contested decision, that, considering that none of those entities ‘compete[d] on the fitness market’, the fact that the trade mark proprietor ‘[might] not have controlled use of the mark in relation to such activities’ did not suffice to establish that the word element ‘spinning’ had lost its distinctiveness on the relevant market.
28      Lastly, the applicant claims that the Fourth Board of Appeal did not distinguish, as regards the definition of the relevant public, between the goods in Class 28 and the services in Class 41. It submits that exercise programmes on stationary bikes in Class 41 are purchased by consumers who go to fitness centres, who play a decisive role as regards the perception of the contested mark ‘even though the view of professionals must also be taken into account here in accordance with the judgment of [8 November 2018, SPINNING (T‑718/16, EU:T:2018:758)]’.
29      EUIPO and the intervener dispute those arguments.
30      Article 51(1)(b) of Regulation No 207/2009 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings 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.
31      It is apparent from the case-law that Article 51(1)(b) of Regulation No 207/2009 addresses the situation where the mark is no longer capable of fulfilling its function as an indication of origin, namely to identify the goods or services covered by the mark as originating from a particular undertaking and thus to distinguish those goods or services from those of other undertakings (see judgment of 18 May 2018, Mendes v EUIPO – Actial Farmaceutica (VSL#3), T‑419/17, EU:T:2018:282, paragraphs 22 and 23 and the case-law cited).
32      Thus, while Article 7 of Regulation No 207/2009 specifies circumstances in which the mark is from the outset incapable of fulfilling its function as an indication of origin, Article 51(1)(b) of that regulation concerns the situation in which the use of a mark has become so widespread that the sign constituting that mark has come to designate the kind, the type or the nature of the goods or services covered by the registration rather than the specific goods or services originating from a particular undertaking. The mark, having become the common name of a product, has therefore lost its distinctive character, with the result that it no longer fulfils that function (see judgment of 18 May 2018, VSL#3, T‑419/17, EU:T:2018:282, paragraph 25 and the case-law cited).
33      The rights conferred on the proprietor of a mark under Article 9 of Regulation No 207/2009 may then be revoked provided, first, that that mark has become, in the trade, a common name for a product or service in respect of which it is registered and, secondly, that that transformation is due to acts or inactivity of that proprietor. Those conditions are cumulative (see judgment of 18 May 2018, VSL#3, T‑419/17, EU:T:2018:282, paragraph 26 and the case-law cited).
34      According to the case-law, in cases where intermediaries participate in the distribution to the consumer or the end user of a product which is covered by a registered trade mark, the relevant classes of persons whose views fall to be taken into account in determining whether that trade mark has become the common name in the trade for the product in question comprise all consumers and end users and, depending on the features of the market for the product concerned, all those in the trade who deal with that product commercially (see judgment of 18 May 2018, VSL#3, T‑419/17, EU:T:2018:282, paragraph 31 and the case-law cited).
35      The mark forms part of a process of communication between vendors and purchasers. That process produces its intended result and the trade mark fulfils the function justifying its existence only where both parties involved in the communication ‘understand’ the trade mark, in the sense that they are aware of its function of an indication of origin. If either party considers the trade mark to be a generic name, the information which that trade mark conveys is not transmitted (see judgment of 18 May 2018, VSL#3, T‑419/17, EU:T:2018:282, paragraph 32 and the case-law cited).
36      Nevertheless, a trade mark may, even if the purchaser does not know that it is a trade mark, continue to perform its function as an indication of origin where an intermediary exerts a decisive influence over the purchaser’s decision to purchase and the intermediary’s knowledge of the trade mark’s function as an indication of origin thus leads to the success of the communication process. That is the case where it is customary in the relevant market for the intermediary to give advice which has a decisive bearing on the decision to purchase or where the intermediary actually makes the decision for the consumer himself or herself (judgment of 18 May 2018, VSL#3, T‑419/17, EU:T:2018:282, paragraph 33; see also, by analogy, Opinion of Advocate General Cruz Villalón in Backaldrin Österreich The Kornspitz Company, C‑409/12, EU:C:2013:563, point 59).
37      Thus, while the relevant circles include primarily consumers and end users, intermediaries playing a part in the assessment of the customary nature of the mark must also be taken into account (see judgment of 18 May 2018, VSL#3, T‑419/17, EU:T:2018:282, paragraph 34 and the case-law cited).
38      It follows from the case-law cited in paragraphs 34 to 37 above that the relevant circles, whose point of view must be taken into account when it is assessed whether the contested mark has become, in the trade, the common name of the product marketed under that mark, must be defined in the light of the characteristics of the market for that product (judgment of 18 May 2018, VSL#3, T‑419/17, EU:T:2018:282, paragraph 35).
39      It must be pointed out at the outset that the applicant claims that the contested mark has become the common name for a particular sporting activity. In the context of the present proceedings, the Court has already held that that sporting activity is practised on indoor cycles, in a group, generally in gyms, and under the guidance of a fitness instructor. Moreover, in general, the indoor cycles which are used to practise the sporting activity in question are purchased by commercial operators of gyms, sports facilities and rehabilitation facilities. Consequently, it was held that professional customers, such as, inter alia, operators of gyms, sports facilities and rehabilitation facilities, play a central role on the ‘exercise equipment’ market and that they have a decisive influence on the selection, by end users, of ‘exercise training’ services. 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 (judgment of 8 November 2018, SPINNING, T‑718/16, EU:T:2018:758, paragraphs 58, 59, 63 and 64).
40      The Fourth Board of Appeal found that, in the light of what had been held regarding the relevant public in the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758), it remained for it to assess whether the contested mark was, on the filing date of the application for revocation, perceived as a common name by the professional public as defined by the Court (paragraph 31 of the contested decision).
41      Before carrying out that assessment, the Fourth Board of Appeal classified the evidence provided by the applicant into eight categories in the following manner:
–        (1) newspaper and magazine articles which refer to ‘spinning’ as a kind of sports activity and the corresponding NEWTON MEDIA analysis for the period from 1 January 2011 to 31 December 2011;
–        (2) printouts from the webpages of Czech online shops for sports equipment, where the term ‘spinning’ was used in relation to stationary bikes;
–        (3) printouts from the webpages of fitness centres, wellness centres and hotels, where the term ‘spinning’ appears in relation to sports activities;
–        (4) the FOCUS market survey ‘Concept of Spinning and its Perception’ of January 2010;
–        (5) lexical entries for the term ‘spinning’ in English and Czech dictionaries and the use of the word in patents for stationary bikes;
–        (6) printouts from online directories in which ‘spinning’ forms part of sub-categories together with words such as ‘fitness, aerobic, yoga, sauna’ and from commercial registers regarding trade licences granted for the ‘provision of physical education and sports services in the sphere of a fitness centre and spinning’;
–        (7) lists of Czech company names, internet domains and registered trade marks and lists of goods and services covered by registered trade marks that contain the word ‘spinning’;
–        (8) the use of the word ‘spinning’ as a reference to a sports activity in internet forums and blogs (paragraph 32 of the contested decision).
42      However, the Board of Appeal from the outset excluded from its assessment the evidence classified under categories 5 to 8 which have been referred to in paragraph 41 above, on the ground that that evidence did not allow ‘any conclusion with regard to the question of how the word “SPINNING” [was] perceived by the relevant public of commercial operators of fitness and rehabilitation facilities’ (paragraph 33 of the contested decision).
43      It is, however, apparent from reading the passages in the contested decision relating to them that, in actual fact, of the four categories which have been referred to in paragraph 42 above, only the category of evidence seeking to establish that the word element ‘spinning’ appears as a category in online directories seems to have been excluded by the Fourth Board of Appeal exclusively on account of the fact that that evidence was not capable of showing how the professional public perceived the contested mark (paragraph 36 of the contested decision). It is clear from the contested decision that the Fourth Board of Appeal excluded the other three categories of evidence at issue because they were irrelevant with regard to showing how that mark was perceived by the general public (paragraphs 34, 35, 38 and 39 of the contested decision).
44      The fact, however, remains that the whole of the analysis set out in the contested decision is focused rather on the professional public’s perception of the contested mark. That is apparent from the Fourth Board of Appeal’s assessment of the evidence in categories 1 to 4 which have been referred to in paragraph 41 above and, more specifically, first, from the part of the contested decision which deals with the ‘articles and media analysis’, most of which the Fourth Board of Appeal regarded as addressing ‘rather the general public than the professional public’ (paragraph 41 of the contested decision) and which, in general, could not suffice ‘to establish generic use by the general public and even less by the professional public’ (paragraph 43 of the contested decision). Secondly, the evidence relating to ‘online shops for sports equipment’ was also rejected by the Fourth Board of Appeal since it related only to the perception of end consumers (paragraph 44 of the contested decision). Thirdly, the Board of Appeal found that the evidence which was deemed to relate to fitness centres was insufficient ‘to establish that commercial operators throughout the Czech Republic … no longer recognis[ed] “SPINNING” as the trade mark of the [applicant] but as a generic name only’ (paragraph 45 of the contested decision). Fourthly, as regards the market survey ‘Concept of Spinning and its Perception’, the Fourth Board of Appeal found that it was of no evidential value with regard to the perception of the relevant professional public ‘because it clearly assesse[d] the perception of end consumers only’ (paragraph 48 of the contested decision).
45      The applicant also relied, before EUIPO, on a decision issued by the Úřad průmyslového vlastnictví (Industrial Property Office, Czech Republic) on 4 November 2014 by which the latter rejected the application for registration of the mark SPINNING filed by the intervener (paragraph 53 of the contested decision). After pointing out that the abovementioned decision was in part based on evidence which referred to a period prior to the accession of the Czech Republic to the European Union (paragraph 54 of the contested decision), the Fourth Board of Appeal found that that decision was, moreover, based ‘essentially on the same evidence as submitted in the proceedings at hand[,] which [was] not conclusive for the perception of the professional public’ (paragraph 55 of the contested decision).
46      It was, lastly, in essence, for the same reasons that the Fourth Board of Appeal found that the decision of the EUIPO examiner to reject the application for registration of the word mark SPIN-BIKE was irrelevant in the present case (paragraph 57 of the contested decision).
47      It follows that the question raised in the present case is that of whether, in a situation such as that in the present case, given the characteristics of the market concerned and having regard to the conclusions which must be drawn from the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758) (see paragraph 39 above), the Fourth Board of Appeal was right in rejecting the application for revocation at issue by taking into account primarily the perception of the contested mark by the part of the relevant public consisting of professionals, inter alia, of operators of gyms, sports facilities and rehabilitation facilities.
48      In the light of the case-law which has been referred to in paragraphs 36 and 37 above, that question must be answered in the affirmative.
49      The Court held, in paragraphs 63 and 64 of the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758), that the public consisting of professionals on the relevant market, such as, inter alia, operators of gyms, sporting facilities and rehabilitation facilities played a central role on the market for the goods in Class 28 and had a decisive influence on the selections of end consumers, as regards the services in Class 41. It must therefore be held that the Fourth Board of Appeal was right, in the present case, in the context of its assessment, in taking into account primarily the perception of the contested mark by professionals who are part of the relevant public and exert a decisive influence over the end consumers’ decisions to purchase, for the purpose of the case-law referred to in paragraph 36 above.
50      In any event and contrary to what the applicant claims (see paragraph 26 above), the Fourth Board of Appeal did not totally exclude end users from its assessment.
51      In that regard, it must be stated that the Fourth Board of Appeal, even if only in part, assessed the evidence in so far as that evidence was deemed to show that the general public perceived the contested mark as a generic name. First, as has been stated in paragraph 43 above, most of the evidence classified under the four categories which it excluded from the outset from its assessment was excluded on account of the fact that it did not make it possible to establish how the contested mark was perceived by the professional public or by the general public. Secondly, as is apparent from paragraph 44 above, the Fourth Board of Appeal examined the evidence classified under the category ‘articles and media analysis’ not only in relation to the perception of the public consisting of professionals in the sector, but also through the prism of the perception of the end consumer.
52      Furthermore, the Fourth Board of Appeal found that the market survey provided by the applicant did not allow the conclusion that the term ‘spinning’ was perceived as a generic name by the Czech general public in view, inter alia, of the number of people asked (paragraph 49 of the contested decision), but also in view of the licence scheme operated by the intervener, ‘namely [of] offer[ing] “SPINNING” courses through authorised fitness centres and not by itself as a single undertaking’ (paragraph 50 of the contested decision).
53      Consequently, even if, as the applicant submits, the Fourth Board of Appeal was not, in the present case, entitled to base its assessment exclusively on the perception of the contested mark by the public consisting of professionals in the sector, it must be stated that it did, in any event, at least in part, in the context of its analysis, take into account the general public’s perception of the contested mark. It must thus be held that the Fourth Board of Appeal did not err in law as regards the definition of the relevant public in the present case.
54      That finding cannot be called into question by the other arguments which the applicant has put forward in that regard.
55      Consequently, on the one hand, it is necessary to reject the applicant’s argument regarding the Board of Appeal’s failure to take account, in the context of its assessment, first, of sellers of stationary bikes, who, in its submission, have a clientele consisting both of fitness centres and of individuals, and, secondly, of entities such as hotels, community centres and sports clubs which are, in its submission, likely to put stationary bikes at their customers’ disposal (see paragraph 27 above).
56      As is apparent from paragraph 49 above, by its judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758, paragraphs 63 and 64), the Court held that the relevant professional public consisted, in the present case, essentially of ‘operators of gyms, sporting facilities and rehabilitation facilities’, namely of categories of professionals whose perception was taken into account by the Fourth Board of Appeal.
57      In that regard, it must be pointed out that, in so far as the applicant refers here to operators of sports clubs, those operators of sports clubs are covered by the broader categories of ‘operators of fitness centres’ and ‘operators of sporting facilities’, who were indeed taken into account by the Fourth Board of Appeal. It must also be pointed out that the Fourth Board of Appeal expressly took hotels and community centres which were likely to put stationary bikes at the disposal of their clients into account in the context of the assessment of the evidence which the applicant had provided relating to the perception of the contested mark by commercial operators of fitness centres (paragraphs 45 and 47 of the contested decision).
58      Furthermore, as regards sellers of stationary bikes, who, according to the applicant, have a clientele consisting both of fitness centres and of individuals, it must be stated that the Fourth Board of Appeal was right in pointing out that end users very rarely bought the high-priced stationary bikes to be used in fitness centres and that commercial operators were highly unlikely to purchase stationary bikes for home use because they might not meet the requirements of a fitness centre in terms of durability, robustness and safety. The Fourth Board of Appeal did not therefore make any error of assessment in finding that taking into account the perception of sellers of bikes could not therefore contribute to the assessment of how the mark was perceived by the relevant professional public (paragraph 44 of the contested decision).
59      On the other hand, as regards the applicant’s claim that the Fourth Board of Appeal did not distinguish, as regards the definition of the relevant public, between the goods in Class 28 and the services in Class 41 (see paragraph 28 above), it cannot be overlooked that the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758), does not make it possible to make any distinction in that regard. As has been stated in paragraph 49 above, in that judgment the Court found that the professionals in the sector concerned played a central role on the market for the goods in Class 28 and had a decisive influence on the selections of end consumers as regards the services in Class 41. Consequently, the applicant’s arguments relating to that claim must be rejected.
60      In the light of the foregoing considerations, the first part of the single plea must be rejected as unfounded.
61      As has been stated in paragraph 23 above, in the context of the third part of its single plea, the applicant submits a series of arguments which seek, in essence, to call into question the part of the contested decision which deals with the examination of the first of the two cumulative conditions which are laid down by Article 51(1)(b) of Regulation No 207/2009 and have been referred to in paragraph 33 above, namely that the mark to which the application for revocation relates has become, in the trade, a common name for a product or service in respect of which it is registered.
62      In those circumstances, the Court considers it appropriate to examine first the third part of the single plea, regarding the allegedly generic nature of the contested mark, before, if necessary, examining the merits of the second part of that plea, relating to the alleged inactivity on the part of the proprietor of that mark.
–       The third part, regarding the allegedly generic nature of the contested mark
63      First, the applicant claims that EUIPO had a ‘complete change of opinion’, ‘not supported by any statement of reasons in the contested decision – let alone a plausible one’, since it is not, in that decision, explained, inter alia, why the assessment of the evidence carried out by the adjudicating bodies before which the case had previously been brought was incorrect. The applicant submits that, consequently, EUIPO infringed the applicant’s right ‘to a fair hearing’ and Article 41 of the Charter of Fundamental Rights of the European Union. The applicant also relies on the requirement that decisions be predictable and on the principle of legal certainty and maintains that, on the basis of the same evidence and wishing to preserve continuity in its assessment of that evidence, EUIPO should have concluded that both the general public and professionals perceived the contested mark as a generic term in the relevant territory.
64      Secondly, the applicant disputes paragraph 45 of the contested decision, according to which ‘it is clear from the evidence submitted by the [intervener] and not contested by the [applicant] that the training programme marketed under the contested mark is offered by … licensees [with regard to that mark] on “SPINNING” bikes and by “SPINNING” instructors certified by the [intervener]’. The applicant claims that it has been challenging those facts since the beginning of the proceedings by pointing out that, on the contrary, an activity under the general name ‘spinning’ was offered and provided on bicycles with various marks by a wide range of operators, including both official licensees and third parties, throughout the whole period of those proceedings. It relies in that regard on items of evidence Nos 132 to 166 which it submitted before the Cancellation Division of EUIPO on 8 February 2012.
65      Thirdly, the applicant claims that EUIPO did not take into account item of evidence No 435, which it had submitted during the pre-litigation procedure and which contains 60 trade licences for commercial activities entitled ‘Supply of physical education and sports services: spinning’ granted to various operators by the Czech State.
66      Fourthly and lastly, the applicant relies on item of evidence No 414A which it submitted to EUIPO with its observations of 21 January 2013 and which, in its submission, shows that there are universities in the Czech Republic, inter alia, Masaryk University in Brno, which grant certificates through a programme entitled ‘Fitness instructor – Specialism: spinning’.
67      EUIPO and the intervener dispute the applicant’s arguments.
68      First, the applicant submits that the Fourth Board of Appeal incorrectly, on the basis of the same evidence as that which had been examined by the Fifth Board of Appeal, and without any explanation in that regard, reached a conclusion which was the complete opposite of that of the Fifth Board of Appeal in its decision of 21 July 2016, by finding that the contested mark was not perceived by the relevant public as a generic term with regard to the services and goods in respect of which it was registered.
69      In that regard, it is sufficient to point out that, following the annulment, in its entirety, of the decision of the Fifth Board of Appeal by the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758), and its subsequent retroactive elimination from the legal system (see, to that effect, judgment of 13 April 2011, Safariland v OHIM – DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), T‑262/09, EU:T:2011:171, paragraph 40 and the case-law cited), the appeal brought by the intervener against the decision of the Cancellation Division of 21 July 2014 again became pending. In order to comply with its obligation under Article 72(6) of Regulation 2017/1001 to take the measures necessary to comply with the judgment of 8 November 2018, SPINNING (T‑718/16, EU:T:2018:758), the Fourth Board of Appeal was therefore required to carry out an examination of all the conditions laid down by Article 51(1)(b) of Regulation No 207/2009 and was not, in that regard, in any way bound by the considerations or the findings set out by the Fifth Board of Appeal in its decision of 21 July 2016 or even by those set out by the Cancellation Division, the decision of which it was responsible for reviewing in the light of the arguments and evidence which had been submitted before it. It must be stated, in that regard, that the Fourth Board of Appeal carried out that review and stated the reasons for its findings.
70      Furthermore, as EUIPO states in its written pleadings before the Court, there is no provision in Regulation 2017/1001 which requires that, following the resumption of the proceedings before EUIPO after the annulment of a decision of the Boards of Appeal by the Court, the applicant again be invited to submit its observations on points of law and fact on which it has already had ample opportunity to express its views in the course of the written procedure previously conducted, given that the file as then constituted has been taken over by the Board of Appeal (see, to that effect, judgment of 3 February 2017, Kessel medintim v EUIPO – Janssen-Cilag (Premeno), T‑509/15, not published, EU:T:2017:60, paragraph 26 and the case-law cited). Consequently, all of the arguments which have been submitted by the applicant and have been set out in paragraph 63 above must be rejected.
71      Secondly, as regards the applicant’s arguments seeking to dispute paragraph 45 of the contested decision (see paragraph 64 above), it must, first of all, be pointed out that, as the applicant itself confirmed in its reply to the questions of the Court of 6 December 2021, items of evidence Nos 132 to 166, to which it had referred in the observations which it had submitted to EUIPO on 21 January 2013, concerned only centres authorised by the intervener and not other entities. However, even if it were to be accepted that the evidence to which the applicant refers is capable of proving its claims, the fact remains that it does not make it possible to call into question the content of paragraph 45 of the contested decision. The Fourth Board of Appeal did not rule out the possibility that some of the centres authorised by the intervener might use the trade mark in a generic manner or even breach the terms of their licences. On the contrary, it stated in paragraph 47 of the contested decision that, ‘where an agreement [was] concluded, parties [could] rely on the compliance with the terms of such agreement’ and that ‘there [was] no obligation of a party to take, from the start, measures against a potential breach of such agreement’.
72      In any event, on the one hand, the answer to the question of how many entities use the contested mark in breach of the terms of their licences is not apparent either from the case file with which the Court has been provided or from the arguments submitted by the applicant, and even less apparent is the finding that that number is decisive in the context of the present assessment. On the other hand, it must be stated that, by the arguments which it has submitted before the Court, the applicant does not appear to call into question the actual existence of the licence scheme set up by the intervener, even though it disputes the number of centres and instructors certified by the intervener or even maintains that it is not aware of the exact content of the licence agreements concluded under that scheme.
73      Thirdly, as regards item of evidence No 435 (see paragraph 65 above), it is clear from the observations which the applicant submitted to EUIPO on 12 November 2013 that that item of evidence contains a list of 66 instructors with a commercial licence such as that described by the applicant, only 3 of whom are also certified by the intervener. However, it is important to point out that it is impossible to know from those statements to what extent the number of instructors who have that commercial licence is significant in relation to the total number of sports instructors in the Czech Republic in order to assess whether that information is relevant in the present case.
74      Lastly, as regards item of evidence No 414A on which the applicant relies (see paragraph 66 above), it must be pointed out that, in the observations which it submitted to EUIPO on 15 April 2014, the intervener claims that the university programme at issue contained courses offered by instructors which it had certified, a claim which it submits is proved by various documents and, in particular, by the documentation which the participants in the programme received. However, it must be stated that the applicant does not claim to have disputed that evidence before EUIPO and does not provide any evidence which is capable of calling it into question before the Court.
75      Consequently, it must be pointed out that the Fourth Board of Appeal was right in finding that the applicant had not proved that, as at the date on which the application for revocation was filed, the contested mark had become, in the territory of the Czech Republic, the common name in the trade for a product in Class 28 or a service in Class 41 in respect of which it is registered.
76      The third part of the single plea must therefore be rejected as unfounded.
77      In the light of the case-law which has been referred to in paragraph 33 above, since one of the cumulative conditions for the application of Article 51(1)(b) of Regulation No 207/2009 is not satisfied, the single plea put forward by the applicant must be rejected without examining the merits of the second part of that plea, in which the applicant submits that the Fourth Board of Appeal erred in finding that it had not established that the alleged transformation of the contested mark into the common name in the trade for the goods and services in respect of which it was registered was due to acts or inactivity on the part of the intervener.
The other observations submitted by the applicant
78      The applicant claims, first of all, that it refuted, before the adjudicating bodies of EUIPO, the evidence which the intervener had provided for the purposes of proving that it, the intervener, ‘had “invented” the stationary exercise bike and indoor cycling and had “created” the word SPINNING’. The applicant submits that it has shown that the term ‘spinning’ has been used in connection with cycling since the nineteenth century and that, more specifically, the instructor-led group sporting activity which is practised on stationary bikes and accompanied by background music existed before the rights of the proprietor of the contested mark. It argues that the word element ‘spinning’ is not, moreover, highly distinctive, because ‘[it] describ[es] … the chief movement involved in exercise on a stationary bike’. The applicant relies, in that regard, on extracts from the decision of the Fifth Board of Appeal which, it submits, point in that direction. It also submits that the extent of the desirable activity on the part of the proprietor of the contested mark must, in a context such as that of the present case, be directly proportionate to how descriptive that mark is.
79      It argues that, on account of the intervener’s limited interest in the Czech market, the word element ‘spinning’ has been used in good faith in a generic sense in the relevant territory as from, at least, 2007 by the applicant, which has been the proprietor of an EU figurative mark containing the word element ‘aerospinning’ since 2010 and has invested significantly in the Czech market, but has also been used in good faith in a generic sense by the general public and professionals.
80      The applicant states that, once they have ended, the revocation proceedings at issue will not enable it to obtain an exclusive right over the use of the contested mark. It submits that those proceedings have been pursued in the public interest for almost 10 years and have been financed by its own resources. It argues that, in the light of the role which it has discharged, it is unjust for ‘the administrative authorities to [confront it with] inappropriate, impracticable requirements’.
81      Lastly, the applicant maintains that the revocation of the contested mark would not adversely affect the intervener excessively, because, if its application for revocation were upheld, the intervener could, on the basis of Article 139 of Regulation 2017/1001, request the transformation of the contested mark into national trade marks.
82      EUIPO submits that the applicant’s observations are irrelevant with regard to the outcome of the present proceedings. The intervener adds that those observations are also incorrect.
83      In that regard, it must be pointed out that, as has been stated in paragraph 33 above, Article 51(1)(b) of Regulation No 207/2009 lays down two cumulative conditions for its application, namely, first, that the contested mark has become, in the trade, the common name for a product or service in respect of which it is registered and, secondly, that that transformation is due to acts or inactivity of its proprietor.
84      The applicant’s arguments concerning the inherent distinctiveness of the contested mark, any good faith on the part of the applicant for revocation, the objective of its action, the interest which the relevant market has for the proprietor of the contested mark or even the consequences which any revocation could have for that proprietor, relate to factors which are not among those which must be taken into account in the context of the assessment of an application for revocation such as the application at issue. Furthermore, as EUIPO correctly points out, the Fourth Board of Appeal did not take those factors into account. It must therefore be stated, as observed by the intervener, that the observations of the applicant which have been set out above cannot usefully call into question the content of and the findings in the decision of the Fourth Board of Appeal.
85      In the light of all of the foregoing considerations, the action must be dismissed in its entirety.
Costs
86      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
87      Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO and the intervener, in accordance with the forms of order sought by them.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Aerospinning Master Franchising s. r. o. to pay the costs.
Costeira
Kancheva
Perišin
Delivered in open court in Luxembourg on 6 July 2022.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.