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Review
Those who sit in glass houses shouldn’t throw stones ....
by Jean-Pierre L. Schupp (Fitness Tribune)
Something that has concerned me for quite some time now is the fact
that more studio owners and the whole fitness industry should finally
realize how enormously important it is to display a certain degree
of professionalism in every situation. It is no good to naively
imitate every new fashion in fitness that comes along. In the meantime,
this type of imitation has assumed alarming proportions, as the
general tendency seems to be to simply copy even the names being
used without having reviewed the facts, i.e. with regard to legal
security or trademark protection, etc. And the times are most likely
over when new trends of whatever kind – especially those coming
from the USA –are able to be copied with impunity. For the
imitators to then get all huffy once possibly justified trademark
claims are asserted or even to play the role of the financial or
other victim is behavior that is incomprehensible for some people
including me. At this point, I remember a proverb which is a bit
different in the original, but which seems to be appropriate here,
namely "Look a gift horse in the mouth before you invest."
The fact that I (because of recent events) have decided to focus
on an example coming from the trademark litigation related to the
”Tae-Bo" trademark, or to ”Thai-Bo" and ”European
Tae-Bo", or similar names respectively, is purely coincidental.
There are plenty of other examples that I could have chosen, such
as Body-Pump, Body & Mind etc., which could have or have indeed
taken a similar course. In his editorial in the June 2001 issue
of Body Life, Hubert Horn played down the Tae-Bo trademark lawsuits
a bit too much. Was this done to reassure the studio owners concerned?
Is Mr. Horn perhaps one of those puppeteers who pulls the strings
here and there to make others dance to his music? Or is he possibly
worried about his own ”glass house"? In this case, perhaps
he should bear in mind that an unconsidered cast of a stone can
have disastrous consequences (for others as well).
To my knowledge, he holds the following positions:
a) editor-in-chief of the fitness magazine called Body Life, which
is published in Karlsruhe;
b) managing director of SAFS & BETA, which is domiciled in Wiesbaden;
c) chairman of the Advisory Board of VDF (Association of German
Fitness and Leisure Companies), which is based in Berlin, with responsibility
for public relations;
d) owner of the Horn Druckerei (specialized publishing house), which
is domiciled in Bruchsal;
e) organizer of the Body Life trade conference, for which he still
holds a majority stake of 75 %;
f) owner of Fitness-Studio Horn (2000 square meters in size), with
a jumbled and unique variety of fitness equipment brands. (One might
ask why this is so.)
With so many cross-linked interests, is it even possible to still
be as objective and neutral as one expects of an editor-in-chief
of a trade journal?
What has actually happened? In the aforementioned editorial, the
following is stated, inter alia: "In Holland, the name ”Tae-Bo"
may now be used without any restrictions". The conclusion drawn
from this statement appears in the text next to the editorial: If
a Dutch trademark court releases the ”Tae-Bo" trademark
in Holland, this release could automatically also be applied by
a German trademark court by virtue of European trademark law, and
so Tae-Bo is likely to be able to be used freely by others. If this
were the case, then soon all of the other similar-sounding names,
such as "Thai-Bo” (SAFS & BETA) or "European-Tae-Bo”
(Frank Magnus & Doro Müller), etc. could also continue
to be used without running into any trademark problems.
However, our research has shown that although the American attorneys
of the firm called BG-Star Productions Inc. (Managing Director:
Billy Blanks), i.e. the NCP Marketing Group (responsible for the
marketing of Tae-Bo products and for the assertion of trademark
rights in Europe, inter alia), lost the preliminary proceedings
in Holland in June 2000, yet there is going to be a new and final
proceedings towards the end of this year or by no later than in
the year 2002. The NCP attorneys have stated that they have good
hopes of winning this new case, because at that time in June 2000,
the parties involved in the proceedings before the Dutch court did
not know that Tae-Bo had definitely been registered in Alicante
on 1 August 2000.
Only recently there was some turmoil in the German fitness industry,
as many studios that had been using Thai-Bo or European-Tae-Bo or
similar sounding names had received warning notices from the NCP
Marketing Group and had been asked to sign a declaration of discontinuance
in this respect. Therefore, it is wrong to assume that IFAA, which
holds the Tae-Bo license for Austria, Switzerland and Germany from
BG-Star Production Inc., is directly behind this current campaign
of warning notices.
I am not interested in adding grist to the mills of IFAA (or Tae-Bo),
but wish to demonstrate to the industry on the basis of this example
that professional clarification of the legal situation ahead of
time help to avoid trouble and costs later on. I wish to show how
with their tactic (which represents clear communities of interest)
of trivializing the problem, certain gentlemen (today it just happens
to be Mr. Horn) and certain associations, too (in this case VDF)
are attempting to throw dust into the eyes of others or what is
worse, to twist the facts.
In the last paragraph of his editorial, Hubert Horn also writes:
"Whoever has received a warning notice from NCP (or from any
other party) should not allow themselves to be browbeaten, but should
contact VDF instead". In other words, now an association (the
Body Life magazine is the official publication of VDF) is being
drawn directly into this lawsuit. But why? Actually, the problem
has nothing to do with VDF. It was caused by Mr. Horn himself, namely,
when he, as the managing director of SAFS & BETA, deliberately
had the very (too) similar sounding name of ”Thai-Bo"
(or "ThaiBo by SAFS & BETA”) entered and registered
as a trademark (or he and others are currently in the process of
doing so), and so he alone should accept the responsibility for
this situation. Mr. Horn will surely not object, however, if VDF
and not SAFS & BETA might possibly have to bear the litigation
costs, which have the potential to assume immeasurable proportions.
Honestly, isn’t this typical of our industry or of the puppeteers
(who are hopefully becoming fewer and fewer and) who by virtue of
their national and international contacts (they’re sitting
at the source, so to speak!) are able to discover more quickly than
others what trend is going to be heading our way from abroad and
who in the past were always able to exploit their knowledge? And
then this or that name is simply registered as a trademark in Germany,
too. Apart from a few settlements, things always turned out well
in the past. But now there is NCP, which not only represents Billy
Blanks’ trademark rights, but also has sufficient know-how
and in particular, the capital to assert these rights in lawsuits
lasting several years, if need be. After all, the name Tae-Bo was
registered in the USA on 14 October 1998 and an application for
registration was already filed in Europe (Alicante) on 1 April 1999,
but only registered on 1 August 2000. Thus, certain people had enough
time to have Tae-Bo, which was already quite successful in the USA,
registered with the Patent and Trade Mark Office in Munich as their
own trademark under the same or a similar name. The fact many in
the industry are suddenly screaming in shock is mostly likely to
be attributed to the "big players”, who are trying to
pull their heads out of the noose with their tactics and to avoid
possible claims for damages. In the event that the studios who have
sent their instructors for training to Thai-Bo courses offered by
SAFS & BETA, European Tae-Bo etc. do not sign the declaration
of discontinuance ("Unterlassungsverpflichtungserklärung”)
or lose a later lawsuit, they might possibly be threatened with
a temporary restraining order or even an action for damages. This
could amount to a couple of hundred thousand marks for Thai-Bo by
SAFS & BETA (with various courses held in the years 2000 and
2001, for a course fee of DM 395), not to mention European Tae-Bo,
or others.
On 18 July 2001 a case pertaining to the abuse of the Tae-Bo trademark
was heard by the Regional Court of Hamburg, namely NCP versus Frank
Magnus & Doro Müller. This case was adjourned until 12
September 2001, however. Nevertheless, what will interest many is
the fact that NCP has already won with regard to the request for
cancellation of a registered trademark. Frank Magnus & Doro
Müller had to file a request with the German Patent and Trade
Mark Office in Munich to have their own trademark ”European
Tae-Bo" cancelled.
It may be new for the fitness industry that companies are interested
in asserting their rights of all kinds – including trademark
rights - so decisively here in Germany. This is something that is
going to cost some people not only time but will also hit them where
it hurts the most, namely their wallets. Nationally and internationally,
however, this will bring our industry closer to a desirable degree
of professionalism or even to achieving a certain industrial standard.
In other words, reputable and conscientious businessmen will continue
to have an opportunity to reach their goals through above-average
commitment. On the other hand, the air is going to get thinner for
all too transparent old boys’ networks. Various organizations
and associations are going to have to ask themselves the following
question now and in the future: "Are we as an association really
neutral, for example, or do we actually only represent the opinion
of a few interest groups?"
I do not believe that Mr. Horn will voluntarily announce his resignation
from VDF, as VDF too and especially the head of the Berlin Office,
Dr. Krempel, have stuck their necks out too far by filing a request
for the cancellation of a registered trademark. In my opinion, the
credibility of the association has been severely shaken by this
whole campaign.
Dr. Krempel from VDF declared the following to me in a telephone
conversation held on 11 July 2001: The editorial in the June issue
of Body Life cited above was not written by Mr. Horn in his capacity
as the managing director of SAFS & BETA, but in his capacity
as a representative of the Managing Board of VDF with responsibility
for Public Relations. VDF had recently filed a request for cancellation
of the registration of the trademarks "Tae-Bo” (i.e. the
original term) and "Thai-Do” with the Patent Office in
Munich and with OHIM, the European central office, in Alicante.
It is going to take months until a decision is reached by these
bodies.
If this request for cancellation of a registered trademark is approved,
then general law will apply to Tae-Bo, i.e. the generic term could
be used by anyone.
If the request for cancellation of a registered trademark were to
be rejected in Alicante, then all of the studios using similar sounding
names, such as Thai-Bo, Thai-Do, European-Tae-Bo etc., would have
to sign a declaration of discontinuance in the form of an affidavit;
come up with a new name for their aerobic-kick-box courses and they
would have to expect to become involved in an action for damages.
According to Dr. Krempel, various attorneys have already joined
forces as a community of interests. He went on to say that it was
also the goal of the VDF, as an association representing common
interests, to bring about "legal security” for the industry.
(The question is for whom?)
VDF recently launched an industry survey in order to prove that
terms such as Tae-Bo, etc., had already been in common use here
in Germany prior to 1 August 2000. The 500+ to 600 filled-out questionnaires
returned by studio owners to VDF are supposed to substantiate this
claim. This is much ado about nothing, however. This argument is
also not going to do the request for cancellation of the registered
trademark filed in Alicante any good, because during the review
of the entry of Tae-Bo (the original) in Spain twelve months ago,
nobody was impressed by similar arguments.
At the next ordinary general meeting of VDF we shall see whether
a few heads are going to roll or not and whether the fitness industry
will finally have the civil courage to do things properly.
Only those who are and remain neutral and critical will be able
to have a positive impact on an industry. My constructive criticism
is intended to help achieve the realization that professionalism
is also a MUST in the fitness industry.
Sincerely,
Jean-Pierre L. Schupp
Minusio, 20 July 2001
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