In the opposition filed against the Benelux trademark application W Work by WeWork, the latter relied on a 2013 trademark registration for, among other things, sporting activities , training and entertainment (class 41). An easy win you’d think. But, no. WeWork had to pull out all the stops to win this case.
The fitness club requested WeWork to show that it had used its 2013 trademark. The fitness club had every right to request this information because the registration of WeWork is older than five years. If you can’t demonstrate use of an old registration, you cannot claim that right.
Surprisingly, WeWork submitted a considerable amount of evidence, but according to the Benelux Trademark Office, none of the documents clarifies the type of services they actually offer under the WeWork trademark. The evidence shows slogans like “Join our community of startups today! We grow businesses by creating spaces, programmes and experiences that people rave about.” But how exactly? The trademark office wonder which services you offer under the WeWork brand?
Of course, everyone knows that the WeWork brand is used on a large scale for all kinds of services, but you have to be able to demonstrate that if requested during a procedure. The trademark office came to the conclusion that the evidence provided by WeWork doesn’t clearly show the use of the trademark, and therefore, the 2013 registration can’t be included in the opposition.
But WeWork got lucky: the company also owns a younger trademark registration (for which no proof of use was required). This trademark is registered for services in ‘wellness‘ and ‘healthy nutrition advice‘ (class 44). The trademark office established that Work’s fitness services have the same theme: nutrition, exercise, and a healthy lifestyle. So these are services similar to WeWork’s ‘wellness‘ and ‘nutrition services‘, which is why they ultimately come out on top. No fitness services for W Work. WeWork gets a narrow escape, I’d say.