12 December 2017Trademarks

Sony triumphant at EU General Court

The EU General Court handed victory to Sony by reversing a revocation of the entertainment company’s trademark by the European Union Intellectual Property Office (EUIPO) today.

Germany-based Vitakraft-Werke Wührmann & Sohn filed an application to register ‘Vita’ as an EU trademark in 2001 for class 9, which includes computer software and videotapes.

The mark was registered in September 2005, and by 2011, the mark had been transferred to Sony Computer Entertainment Europe.

Spanish company Vieta Audio then applied for revocation of the mark, claiming it had not been put to genuine use in the EU during a five-year period.

Sony claimed that the mark had been for its handheld gaming console PlayStation Vita (also identified by the sign ‘PSVita’) and for games and accessories related to it.

According to Sony, the name of the console was officially announced in June 2011 and it was promoted extensively until October 2011.

Sony added that in October 2007, it launched “Aqua Vita”, a video game consisting of a virtual aquarium.

In 2014, the Cancellation Division of the EUIPO revoked the contested mark for all of the goods it was registered for.

On appeal, the Fifth Board of Appeal of the EUIPO upheld the decision of the Cancellation Division, finding that all of the evidence filed by Sony showed evidence of use in respect of goods in class 28 but not for the goods covered by the contested mark.

Sony appealed to the EU General Court, relying on a single plea in law, alleging infringement of article 51(l)(a) of Regulation No. 207/2009 (genuine use).

The General Court said that it was not possible to “determine with sufficient clarity” the reasons why the Board of Appeal took the view that the applicant had not proven genuine use for ‘data carriers containing programs’, ‘audio and/or image carriers’, and ‘computer software’.

According to the court, the EUIPO must state the reasons for its decisions, and a lack or insufficiency of reasoning constitutes an infringement of essential procedural requirements.

The court had requested that the EUIPO explain in particular the scope of the expression ‘data carriers’ and ‘data carriers containing programs’ in its decision.

“EUIPO did not provide a satisfactory response to those questions,” noted the court, adding that the Board of Appeal had not stated in a “sufficiently clear and unequivocal manner” the reasons why it found that genuine use of the contested mark had not been established for certain goods.

The court concluded that the reasons for a decision must appear in the body of that decision, and not be made by subsequent explanations.

“It follows from all of the foregoing considerations that the Board of Appeal infringed its obligation to state reasons with respect to the elements of reasoning which are essential to support its final conclusion, with the result that the contested decision must be annulled, without it being necessary to examine the pleas relied on by the applicant,” said the General Court.

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More on this story

8 February 2018   The European General Court ruled against the European Union Intellectual Property Office in a revocation case involving Sony today.