Legal Broil over Pilates Trademark in the Czech Republic
A legal battle over the validity and usage of the “Pilates” trademark in the Czech Republic was similar to the one fought in the USA in 1996 to 2000. Facing each other were Mgr. Renata Sabongui (as the owner of the “Pilates” trademark,) and myPilates ACADEMY (at the time of the legal process Body Style Prague), which called for the invalidation and annulment of this trademark.
History of the Pilates Trademark
In September of 2000, Mgr. Renata Sabongui filed an application at the Bureau of Industrial Property to register the “Pilates” trademark for products and services. The Bureau registered the trademark in 2001. Both the filing of the application, and the subsequent registration of the trademark, are baffling in light of the facts of the litigation in the USA between the owner of the “Pilates” trademark at the time and the Balanced Body company. That dispute lasted four years, and its result was the September 2000 decision to annul the “Pilates” trademark due to its general usage, whereby the word Pilates is understood as a designation for a certain method of exercise.
Sabongui based her charter privilege mainly on the fact that she studied Pilates with Ron Fletcher, who is one of three still living direct students of the author of the method, J. Pilates (the other two are Romana Kryzanowska and Kathy Grant). Thanks to her registration of the “Pilates” trademark, Sabongui became the exclusive user of this term in the Czech Republic. As a result, the usage of the word “Pilates” was disallowed not only to all the other Pilates instructors, but also to all Fitness Centers. Exercise studios could not call their courses Pilates sessions, and had to use roundabout designations such as “Exercise according to the Pilates method” (former Factory Pro.) In the same way, other instructors could not publish books or instructional VHS or DVDs with Pilates exercise. Based on an instructor license from Ron Fletcher, Sabongui considered herself the sole person in the Czech Republic allowed to train other instructors and grant them authorization to exercise by the Pilates method. The trademark furnished her with a legal backing.
In 2003, Gabriela Davídková established the first studio specializing in Pilates in the Czech Republic – Body Style Prague, s.r.o. Paradoxically, in view of the validity of the “Pilates” trademark at the time, the word could not be included in the name of the studio. All of the limitations relating to the exclusive ownership of the trademark by Renata Sabongui complicated the activity of the studio in a vital manner. Finally, in September 2005, Body Style Prague files an application to invalidate and annul the “Pilates” trademark.
Why the Term “Pilates” cannot be a Trademark
The law on trademarks defines a trademark thusly: “...any designation... as long as this designation is capable of distinguishing the products or services of one party from the products and services of another party.“ In other words, the law states that a designation protected by a trademark must entail distinguishing capability.
In the case of “Pilates” trademark owner R. Sabongui, such a distinguishing capability, would require the average consumer to connect the “Pilates” designation directly with the services (exercise) provided by this concrete party, that is directly with R. Sabongui or her establisments. However, Pilates is generally understood as a designation of an exercise method created in the beginning of the last century. Joseph Hubertus Pilates, the author of the method, taught this method to a series of students and disciples who were entitled to disseminate it further, and they did so. The method developed, some instructors made further modifications or added their own elements to it, various forms and teaching directions arose, until Pilates achieved a mass following in the USA at the end of the previous century, and then gradually became popular throughout the world. In the Czech Republic, Pilates attained wider recognition at the turn of the millennium. Articles began to appear in newspapers and magazines, exercise videocassettes and DVDs in the stores. All of these facts correspond with decision by the USA court, which stated: „In the case of Pilates, it is an exercise method, not a trademark, and this designation cannot be monopolized or owned by any one subject.“ In the same way as it is not possible to apply for a trademark on words such as for example yoga, aerobics or tae-bo.
Decision of the Bureau of Industrial Property
The petition by Body Style Prague to declare the protected trademark „Pilates“ as invalid and to annul it was joined by several independent instructors, among whom were, for example, Eva Blahušová (the author of many publications about kalanetics, Pilates and other forms of exercise) or Helena Vysušilová (author of Pilates book – Balanced exercise).
The Bureau of Industrial Property also had at its disposal the results of the above-mentioned court dispute that took place in the USA from 1996 to 2000. The designation “Pilates” was at that time found to be generic (i.e. without distinguishing capability), and thus could not be registered as a protected trademark. Congruently, on the basis of presented evidence, the Bureau of Industrial Property in the Czech Republic also stated: “The term ‘Pilates’ refers to a type of exercise sport, similarly as with aerobics, calanetics, etc., in which consumers do not discern among the individual subjects offering these sports on the market based on the designation of the particular sporting activity, but orient themselves according to the names of the fitness centers or concrete instructors.”The decision also draws attention to the fact that the result of the court dispute in the USA was already known prior to the application for the “Pilates” protected trademark in the Czech Republic.
In October 2006, the Bureau of Industrial Property proclaimed the protected trademark “Pilates” null and void.