BACKGROUND

SoulCycle is the leading lifestyle brand redefining health and happiness through unique mindbody- soul experiences. More than 20,000 riders take SoulCycle classes every day to ride through struggles, strengthen their bodies, empower their minds and find joy in movement to become the best version of themselves. SoulCycle was founded on a few simple ideas: That fitness could be a physical, musical and inspirational experience, and one that you look forward to. With transformative class offerings, a devoted and loyal community, world-class, one-of-a-kind instructors, and unparalleled hospitality within our studios, SoulCycle serves an important purpose: move people to move the world.

The project began in 2005 in USA and nowadays it is practised worldwide, being widely known in the fitness area.

On December, 20 of 2016 Soulcycle Inc. applied for the registration of the trademark SOUL in order to protect the services on class 41.

The application was rejected by the Trademark Office on August, 17 of 2017 based on the previous registry (precedent) of the trademark Soul Café (mixed) on class 41 by RACF.

By resolution N° 2534 issued by the Trademark Director, it was denied the registry of the trademark SOUL, presenting the firm Soulcycle Inc. an appeal of review in time and due form, with the purpose of revoking the decision. The appeal was denied on November, 29 of 2017.

On March, 6 of 2018, Soulcycle Inc. presented an appeal before the Industrial Property Director in order to revoke decision N° 2534 that denied Soul trademark´s registry.

GROUNDS IN SUPPORT OF THE APPELLATE PROCEDURE

  • The arguments brought were the following: Soulcycle possess an acquired right regarding the designation Soul, being registered in class 41, under Reg. N° 452.494. Moreover, has the registry of the trademark Soulcycle in class 41, under Reg. N° 456.514, as well as the application of the trademark Soul in class 25.
  • The trademark Soul was requested in order to cover exclusively the following services: “Sports activities, gym and health centre, fitness centre and leisure services …”
  • The precedent trademark Soul Café is registered to cover exclusively the following services: “nightclub and/ or pub services, entertainment services, enjoyment, social events, shows, dance venues”.
  • There are grammar, phonetic,and graphic aspects that distinguish the trademarks Soul and Soul Café (mixed), making them distinctive and not easily confused with each other .
  • As well, the specific delimitation within the field were the trademarks are going to be used is different; one was requested for the provision of a nightclub and pubs service and Soulcycle trademark is oriented towards the fitness or physical activities field among others.
  • The precedent trademark consists of a word element and a graphic element, which considered as a whole makes possible for the consumer to distinguish the trademark from the existing records, as well as allowing to determine its commercial origin.
  • It is possible for the trademarks to coexist without risks for the consumer or trade in general.

RESOLUTION OF THE INDUSTRIAL PROPERTY DIRECTOR

On July, 10 of 2019, by resolution N°244 it was established that:

“...The appellant feels aggrieved, among other grounds, due to; in first place, its client is already in possession of an acquired right over the designation SOUL, being currently registered in the same class 41, under Reg. N° 456.514. Applying as well for the registry of the trademark SOUL, in class 25, having already obtained the Granting Resolution. Thus, it raises that the client´s main purpose, by means of the application in the present case is to extend that acquired right over the requested designation in class 41…///... Likewise, it should be highlighted that the precedent trademark includes a word element and a graphic element. The combination of these elements, which considered as a whole, provide an idea to the consumer regarding the trademark that allows to distinguish it from the others within the market, as well as determine its commercial origin...///...Considering the above mentioned, the argument that supports the rejection may no longer constitute grounds for dismissal of the registry application of Soul trademark, Class 41, Record N°1683445, consequently the appealed decison shall be revoked...”

As a consequence, General Director of Industrial Property, decided to revoke the resolution denying the registry of Soul trademark, N°1683445, Class 41, Soulcycle Inc. (word mark), of December, 20 of 2016.

On August 12, of 2019, Soulcycle acknowledged the resolution N°244 and requested the continuation of the proceedings.

CONCLUSIONS

The judgement pronounced by the Industrial Property General Director inexorably shows that Trademark Office decisions regarding registry refusal of the trademarks, may be subject to reversal by a party with a legitimate interest and the required grounds to obtain the registry of the denied trademark.

Considering that the precedent mentioned by the Trademark Office had close similarities with Soulcycle application, we must take into account, that in order to determine possible confusion between the trademarks, these are not the only elements we must empasise on. It is necessary to support the argument carrying out a global review of the case and not restricting it to basic issues as grammatical identity between the trademarks. Consequently, it was possible for Soulcycle Inc. to reverse the Trademark Office decision that damaged not only its interests and its company prestige, but as well its acquired trademark rights in Paraguayan Jurisdiction.