Sony mark Vita winning through failure to state reasons

Although proof for the genuine use use of the Sony mark Vita was not considered sufficient, the mark is now confirmed by the CJEU. A failure to state reasons is decisive in the trademark dispute, which has lasted several years – and the lack of an appeal against the previous ruling of 2017.

The Sony mark Vita, which is at the centre of the dispute, was registered as a union word trademark in September 2005 – originally by Vitakraft-Werke Wührmann & Sohn GmbH & Co. KG – and became a word mark of Sony Computer Entertainment Europe after multiple transfers of rights on September 15, 2011.

An application for revocation of the trademark Vita by the intervener Vieta Audio, SA (Spain) was granted on 30 June 2014 – due to lack of use of the trademark during the relevant five-year period. This was confirmed by the Fifth Board of Appeal in November 2015. Sony appealed against this decision.

Revocation of the Sony Mark Vita by several instances

In the following, this case went further through several instances. By judgment of 12 December 2017 (Sony Computer Entertainment Europe v EUIPO – Vieta Audio (Vita) (T-35/16, not published, EU:T:2017:886)), the European Court of First Instance (CFI) annulled the decision of the Fifth Board of Appeal in its entirety on the ground of inadequate reasoning.

Subsequently, the Presidium of the Boards of Appeal referred this case to the Fourth Board of Appeal under case number R 695/2018-4. By decision of 10 September 2018 (‘the contested decision’), the Fourth Board of Appeal referred several times to the earlier findings of the Fifth Board of Appeal.

Sony’s proof of use of the mark

Sony had to prove genuine use of the trade mark Vita for the relevant five-year period from 14 October 2006 to 13 October 2011, but only in September 2011 had it become the trade mark proprietor by way of transfer of the trade mark rights. This made it difficult to provide sufficient proof of use of the mark. This is because proof of use must relate to the place, time, extent and nature of use of the earlier mark. The length of the period in which the acts of use occurred is also assessed.

Please also read: Proof of genuine use of an earlier trademark: What scope of use?

Sony proved trademark use with its PlayStation Vita, which was launched on the market in February 2012. The name of this new console was officially announced in June 2011. Sony also launched an interactive video game on the EU market in October 2007 under the name Aqua Vita. This video game had been available on the EU market in its online shops since that date.

The Fifth Board of Appeal, the European Court of First Instance (CFI) on 12 December 2017 and also the Fourth Board of Appeal considered Sony’s proof of use of the mark to be insufficient.

Decisive for the reasoning and duty to state reasons

However, the decisive factor in this trade mark dispute is the reasoning of the judgment of 12 December 2017, since in December 2017 the CFI annulled the previous decision of the Fifth Board of Appeal in its entirety on the grounds of inadequate reasoning.

Sony referred to this in the action, which was now decided by the CJEU just before Christmas, on 19 December 2019 (EU:T:2019:894).

The action brought by Sony alleged infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation No 2017/1001) and of the obligation to state reasons. In the contested decision of 10 September 2018, the Fourth Board of Appeal referred several times in its reasoning to the previous decision of the Fifth Board of Appeal.

Sony argued that the Fourth Board of Appeal was wrong to find that the Court in 2017 had upheld certain findings of the Fifth Board of Appeal, since, according to the judgment of December 2017, the earlier decision had to be annulled in its entirety and on the ground of failure to state reasons.

Annulment of the earlier decision for failure to state reasons

The CJEU confirmed this view and agreed with Sony.

The CJEU found that, following the annulment of the earlier decision for lack of reasoning, the Fourth Board of Appeal was required – and in order to comply with its obligation under Article 65(6) of Regulation No 207/2009 – to adopt a new decision on all relevant points concerning proof of use of the mark (for the purposes of applying Article 51(1)(a) of Regulation No 207/2009). The Fourth Board of Appeal did not do so, but referred in part to findings of the earlier decisions.

Res judicata only for reasons in support of the operative part

According to the CJEU, res judicata extends only to the grounds of a judgment which constitute the necessary support for its operative part and are therefore inseparable from it. In addition, a distinction had to be made between the duty to state reasons as an essential procedural requirement – which existed in 2017 – and its substantive legality – which was not reviewed by the Court (CFI) in 2017.

If the General Court annuls an EUIPO decision, the grounds on which it dismissed certain arguments put forward by the parties do not have legal force. Consequently, in the present case, the Fourth Board of Appeal could neither be bound by those aspects of the earlier decision nor confirm them in the contested decision, the CJEU held.

In particular, the CJEU emphasised that a judgment annulling an act takes effect ex tunc and thus has the retroactive effect of removing the annulled act from the legal order. The Fourth Board of Appeal therefore infringed Article 65(6) of Regulation No 207/2009 by failing to take the measures necessary to comply with Article 65(6) of the judgment of 12 December 2017, Vita. In so doing, the Commission has infringed its obligation to state reasons.

Furthermore, the CJEU pointed out that the Vita judgment of 12 December 2017 had become final, as no appeal – in this case no complaint – had been lodged against that judgment.

Therefore, this ruling shows that even a rather weak starting position can lead to success with smart prozessual tactics.

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