The plaintiff is the owner of trademark 2857285, “Bodytone”, word mark, applied for on 19/12/2008 and granted on 04/06/2009 to designate gymnastics and sport articles, among others, included in classes 28 and 35. Files a trademark infringement and indemnification of damages action alleging that the Respondent sold spinning bicycles through its website, offered under the name “BODYTONE EVOLUTION”.

The defendant in its answer to the claim referred to the English language term “body tone”. This term is widely known to the generality of the consuming public in the field of gymnastics and sports, as it refers to the state of contraction of the muscles dependent on the integrity of the nervous system and the properties of the muscles such as contractibility, elasticity, ductility and extensibility. In addition, he filed a counterclaim, requesting the nullity of the trademark of the plaintiff, as to the sale of gymnastics and sport articles. The defendant also sought revocation for non-use with respect to other products, which is not relevant for this review.

Regarding the action for trademark infringement, the plaintiff’s claim was upheld. The reasoning of the Court is expressed in the judgment in the following terms: The average consumer can understand the meaning of certain terms, even if they come from another language – STS 362/2013 of May 30. In this case the term “body” is frequently used and widely understood by the general public and the term “tone” has Latin etymology. However, it is not possible to admit that we are dealing with a term affected by the prohibition of registration of trademarks consisting of descriptive signs or indications. As already stated by the Court of Justice of the European Union in its judgment of September 20, 2001, in reference to the term “Baby-dry”: In relation to marks composed of words, such as the one in dispute, a possible descriptive character must be assessed not only in respect of each of the terms considered separately but also in respect of the whole which they form. Any perceptible difference between the expression of the term proposed for registration and the terms used, in the common parlance of the category of consumers concerned, to designate the product or service or its essential characteristics is adequate to confer on that term a distinctive character enabling it to be registered as a trademark… To assess the aptitude of a term, such as Baby-dry, to have distinctive character, one must adopt the point of view of an English-speaking consumer. From this point of view, and in relation to diapers for babies, the assessment to be made depends on whether it can be understood that the disputed term is the normal way of designating that product or of presenting its essential characteristics in ordinary language.

The judgment then compares the signs “BODYTONE” and “BODYTONE EVOLUTION”, reaching the conclusion that there is a likelihood of confusion and, therefore, infringement of the plaintiff’s trademark. The average consumer normally perceives a sign as a whole and does not proceed to analyse its various details. And when it is a composite sign, he will generally pay particular attention to the first of the terms, since the reading is from left to right. The added word “Evolution” indicates the idea of a new development of the product, so its relevance for the relevant analysis is limited. The word element of the registered mark and the dominant word element of the sign used coincide. The use of the same term “BODYTONE” and the position it occupies in the sign used leads to the existence of similarity between the signs, also showing identity of application.

With respect to the action for damages, the plaintiff chooses to request the lost profit, which it calculates as follows, relying on an expert report: which makes a forecast of what would have been the units sold by the plaintiff under normal conditions, which concludes that the units of EX1 bicycles that it has stopped selling until March 2015 amount to 3,327 units. Taking into account that the profit it receives for each unit amounts to €117, 32, the loss caused by the reduction in units sold amounts to €390,323.64.

The Court does not accept the quantification of the damage as proposed. The Expert’s Report starts from considering that, in the month of April 2018 there is a change in the sales trend, going from a growth in the last months to a decrease. And directly, without further argumentation, he attributes this change in the trend of bicycle sales to the irregular performance of the defendant “as described in the object of this report”. And, on the basis of this premise, which is not adequately justified, it goes on to calculate the loss suffered. Instead, the Judgment recognizes in favour of the plaintiff the compensation quantified at 1% of the price of the bicycles sold, discounting VAT.

Provincial Court of Madrid Decision, October 7th, 2022