Judgments nº T-690/18 of Tribunal General de la Unión Europea, December 19, 2019

• Resolution Date: December 19, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-690/18

(EU trade mark - Revocation proceedings - EU word mark Vita - Decision taken following the annulment by the General Court of an earlier decision - Article 65(6) of Regulation (EC) No 207/2009 (now Article 72(6) of Regulation (EU) 2017/1001 - Res judicata)

In Case T-690/18,

Sony Interactive Entertainment Europe Ltd, established in London (United Kingdom), represented by S. Malynicz QC,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Vieta Audio, SA, established in Barcelona (Spain),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 10 September 2018 (Case R 695/2018-4), relating to revocation proceedings between Vieta Audio and Sony Interactive Entertainment Europe,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins (Rapporteur), President, M. Kancheva and G. De Baere, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 22 November 2018,

having regard to the response lodged at the Court Registry on 12 April 2019,

further to the hearing on 10 October 2019,

gives the following

Judgment

Background to the dispute

1 On 6 July 2001, Vitakraft-Werke Wührmann & Sohn GmbH & Co. KG filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the word sign Vita.

3 The goods in respect of which registration was sought are, inter alia, in Class 9 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description: ‘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, videotapes, exposed films, lithographs’.

4 The application for the trade mark was published in Community Trade Marks Bulletin No 56/2002 of 15 July 2002.

5 The mark applied for was registered on 27 September 2005 under No 2290385.

6 By fax of 28 March 2011, Forrester Ketley Ltd informed EUIPO that, on 16 March 2011, Vitakraft-Werke Wührmann & Sohn had transferred to it its rights in the EU word mark Vita in so far as those rights covered the goods mentioned in paragraph 3 above. Forrester Ketley is a services company which represented, among others, Sony Computer Entertainment Europe Ltd, predecessor in title of the applicant, Sony Interactive Entertainment Europe Ltd, with respect to trade mark rights before EUIPO.

7 The EU word mark Vita, as it resulted from this partial assignment, was registered under No 9993361.

8 By fax of 28 September 2011, Forrester Ketley informed EUIPO that it had transferred the contested mark to Sony Computer Entertainment Europe on 15 September 2011.

9 On 14 October 2011, the other party to the proceedings before EUIPO, Vieta Audio, SA, filed an application for revocation of the contested mark in respect of all of the goods which it covered, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). In that application, it argued that the contested mark had not been put to genuine use in the European Union within the relevant period of five years, which ran from 14 October 2006 to 13 October 2011, and that there were no proper reasons for that non-use.

10 On 4 May 2012, in response to the application for revocation of the contested mark, Sony Computer Entertainment Europe asserted that the contested mark had been put to genuine use in the European Union during the relevant period in relation to the goods in question. It explained that it had used that mark for its handheld gaming console, named the PlayStation Vita, as well as for games and accessories relating to it. It also stated that the name of that new console had been officially announced in June 2011 and had thereafter been promoted extensively until October 2011. The applicant had carried out the official European launch of the PlayStation Vita console at the Gamescom conference, which had taken place in Cologne (Germany) in August 2011, and that console had been placed on the market in the European Union on 22 February 2012.

11 In support of its claims, Sony Computer Entertainment Europe submitted a written statement, dated 4 May 2012, drawn up by one of its directors, to which the following items were annexed:

- a press release, dated 7 June 2011, announcing the name of its new handheld gaming console, namely PlayStation Vita;

- a screenshot, dated 7 June 2011, from the website ‘www.pcmag.com’ mentioning that announcement;

- a copy of an advertising brochure, which was distributed to visitors and journalists at the Gamescom conference, containing, in particular, information on the PlayStation Vita console and on video games to be played on that console;

- a copy of the cover of that brochure, displaying the PlayStation Vita console;

- a diskette containing advertising videos for the PlayStation Vita console, distributed at the Gamescom conference;

- various press articles relating to the PlayStation Vita console and to games to be played on that console, published on the official United Kingdom PlayStation website, dated between 7 June and 22 September 2011;

- a screenshot of a video uploaded to the video hosting website YouTube;

- a press release dated 28 February 2012, relating to worldwide sales of the PlayStation Vita console; and

- screenshots, dated 2012, from the official United Kingdom PlayStation website, relating to accessories - including memory cards - and peripherals for the PlayStation Vita console.

12 On 2 January 2013, Sony Computer Entertainment Europe responded to observations submitted by the other party to the proceedings before EUIPO on 31 July 2012 and provided the following items of additional evidence intended to prove genuine use of the contested mark in relation to all of the goods in question:

- screenshots, dated 12 December 2012, from the official United Kingdom PlayStation website detailing the technical characteristics and specifications of the PlayStation Vita console;

- screenshots, dated 12 December 2012, from the official United Kingdom PlayStation website containing information about an update to the system software for the PlayStation Vita console;

- screenshots, dated 2 January 2013, from the Wikipedia website relating to its parent company and to Naughty Dog, Inc., an American company that develops video games, which is wholly owned by the same parent company; and

- screenshots, dated 12 December 2012, from the official United Kingdom PlayStation website giving examples of package deals comprising PlayStation Vita consoles, games, accessories and other goods.

13 In further observations of 24 April 2013, Sony Computer Entertainment Europe added that, on 25 October 2007, it had launched on...