Sony 'Vita' mark loses out in genuine use revocation proceedings before EU General Court

Genuine use poses a unique quandary for trade mark owners when raised in revocation proceedings. Not only does the trade mark owner bear the burden of producing evidence to establish such use, but the trade mark owner should know that the ‘reputation’ of the mark does not mean that proving such use is guaranteed to succeed. In this sense, one may recall the fate of the BIG MAC mark in 2019 decision of the Cancellation Division (see IPKat here).

Earlier this month, Sony Interactive Entertainment Europe Ltd faced the same problem in relation to their EU word mark ‘Vita’, when the General Court ultimately found that Sony had not provided sufficient evidence of genuine use of the mark within the relevant five-year period.

Let’s see what happened.

How it begins...

Background

In July 2001, an EU trade mark application was filed for the word sign ‘Vita’ for certain Class 9 goods, and later registered in September 2005. Ownership of the registration was subsequently transferred to Sony Computer Entertainment Europe Ltd (the predecessor to Sony Interactive Entertainment Europe Ltd, ‘the applicant’). The class 9 goods in respect of which the mark was registered consisted of:

“data carriers containing programs, computer software; audio and/or image carriers (not of paper), in particular magnetic tape cassettes, audio tapes, audio compact discs, DAT (digital audio tape) cassettes, videodiscs, exposed films, lithographs”.

In October 2011, Vieta Audio filed an application for revocation of the mark under Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) EUTMR), claiming that the contested mark had not been genuinely used during the relevant five-year period (14 October 2006 to 13 October 2011), and that there were also no proper reasons for non-use of the mark.

In response, Sony claimed that there had been genuine use of the mark in connection with its PlayStation Vita (its handheld gaming console) and its associated games and console accessories. In conjunction with its claims, Sony filed a written statement with annexed evidence including: screenshots of announcements from websites regarding the launch of the PlayStation Vita console; press releases relating to the PlayStation Vita console and various games to be played on it; and various advertising brochures and videos. Following further observations, additional screenshots were submitted, including screenshots from 2013 of sales and turnover regarding an interactive video game ‘Aqua Vita’, which also allegedly demonstrated genuine use of the mark.

Eventually, the Second Board of Appeal (‘the BoA’) determined that the evidence submitted was insufficient to prove that the contested mark had been put to genuine use.

Sony did not dispute that genuine use had not been proved in connection with ‘magnetic tape cassettes, audio tapes, audio compact discs, DAT (digital audio tape) cassettes, videodiscs, videotapes, exposed films, lithographs’ in Class 9. However, it submitted that genuine use had been proven in relation to the other goods covered by the mark.

As such, the decision was appealed, with the appellant submitting: first, that the BoA had misinterpreted the meaning of ‘data carriers containing programs’ and ‘audio and/or image carriers (not of paper)’; second, that the BoA erred in concluding that the evidence of use submitted concerning marketing of the PlayStation Vita was insufficient; third, that the BoA erred in concluding that the use of the PSVita mark on video games was not use in relation to ‘computer software’; and fourth, that the BoA had erred in finding that the evidence submitted in relation to the Aqua Vita interactive video game and its mark would not amount to use in relation to ‘computer software’.

GC Decision

Genuine use is found where the mark is used to guarantee the identity of the origin of the goods and services for which the mark is registered. This would not include token use for the sole purpose of preserving the rights conferred by the mark. The rationale of the requirement is not to assess commercial success, nor to review the economic strategy of the undertaking, nor restrict trade mark protection to cases where there had been large-scale commercial use of the mark. Rather, assessment of genuine use entails examining the facts and circumstances surrounding use of the mark, in particular: practices in the relevant economic sector regarded as warranted to maintain market shares for the goods and services covered by the mark; the nature of the goods or services; the characteristics of the market; and the scale and frequency of use of this mark. Genuine use must also be shown by way of solid and objective evidence of effective and sufficient use of the trade mark in the market concerned.

... and how it (inevitably) ends
(Credit: me)

As a preliminary point, since the primary written statement submitted by the applicant was drawn up by one of the applicant’s directors, the General Court (GC) found it would not be sufficient evidence in and of itself, only serving as an indication to be confirmed by other evidence produced.

However, the GC concluded that the other evidence presented did not establish genuine use of the ‘Vita’ mark.

First, when assessing genuine use for ‘data carriers containing programs’, the purpose or intended use of the product in question as determined by consumers would be fundamentally important in the assessment of genuine use (as opposed to looking at the definition of the concept of ‘data carriers’ as set out in online computer terminology dictionaries - as Sony submitted should be done - since such definitions would cover any device the function of which is, in essence, to store data.)

As such, the BoA was entitled to take the view that the evidence presented (allegedly showing that the marketing of the PSVita were to create a market share for ‘data carriers containing programs’) did not show genuine use, as the gaming experience itself had been promoted, rather than its potential storage capacity (which was only listed within the technical specifications). The GC found that the alleged multi-functionality of the device would be irrelevant, as such additional functionalities would be ancillary to the main purpose sought by consumers - namely, to play games on an easily transportable device. The same reasoning could be used to illustrate that genuine use had also not been proven in relation to ‘audio and/or image carriers (not of paper)’.

The GC also found that a brochure with information about various games and an indication that they were compatible with the PlayStation Vita console would not demonstrate genuine use in relation to ‘computer software’, as it provided no indication that the mark was used as a trade mark in relation to such games, games which in turn were distinguished and identifiable by their own word or figurative marks.

Finally, the GC considered evidence submitted in relation to the game ‘Aqua Vita’. Ultimately, the sales figures submitted were not provided in the form of a witness statement (typically a sworn or affirmed statement) and would have to be confirmed by other evidence as opposed to being definitive evidence on itself.

Comment

Genuine use proceedings undoubtedly emphasise the critical role of evidence and the high quality required to refute such grounds for revocation. In this case in particular, the importance of intended use of the product was stressed. Whilst technically the PSVita console was a ‘data carrier containing programs’ and an ‘audio and/or image carrier (not of paper)’, it was ancillary to the main purpose of the product (a handheld device for mobile fun). This case also highlights the importance (as always, in trade mark cases) for the mark to be used as a trade mark is intended - to distinguish those goods (or services) from others with another origin, which Sony was ultimately unable to establish.