The price of Banksy’s anonymity
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A revocation action for non-use was brought against Sony’s trade mark “Vita”. The revocation action was filed by the Spanish company Vieta Audio, SA. The challenge to Sony’s European trade mark was based on the fact that the mark had not been put to genuine use within the relevant five year period. As you would expect, Sony’s “Vita” mark covered a range of Class 9 goods, including “computer software” and “audio and/or image carriers”.
In 2014, Sony’s “Vita” mark was cancelled by the EUIPO’s cancellation division. The General Court have now annulled the original decision of the EUIPO.
The mark was originally registered by a German party Vitakraft-Werke Wührmann & Sohn in 2001 and came under the ownership of Sony in 2011.
The mark “Vita” related to the hand-held SONY gaming product. Evidence of use related to the games console and related accessories. Sony also made an additional use of the “Vita” mark through a game called “Aqua Vita”, an aquarium game which was launched in October 2011.
We know that when attempting to prove genuine use, large scale commercial success is not a requirement. A significant proportion of the admissible evidence which was submitted by Sony, related to advertising campaigns, promotional materials and press articles. Brochure images also formed part of the evidence. It was noted that this activity helped to create an expectation amongst consumers, in relation to the mark. Evidence of this nature helps to demonstrate a desire to carve out a market share.
Evidence must be submitted of use within the European Union. Therefore, it is not surprising that use on the website pcmag.com was not found to be valid. There was no proof that the website had been accessed from within the European Union. Whilst this did not dramatically impact the outcome of this case, it highlights the importance of place of use when relying on web based evidence.
The General Court found that the original decision of the EUIPO lacked reasoning. The General Court stated that reasoning is considered to be essential when reaching a final conclusion. It was stated that the EUIPO must set out “the requisite legal standard and the reason why they took the view”. In addition, the General Court stated that “reasons for a decision must appear in the actual body of that decision.”
This case helps to show how challenging EUIPO decisions can sometimes be a fruitful move for brand owners. It also serves as a helpful reminder to the EUIPO to provide clear reasoning for their decisions.
If you would like any advice on trade mark protection, please get in touch to speak to one of our attorneys.