The General Court of the European Union has ruled in case T‑561/20 Sony Interactive Entertainment Europe Ltd v Vieta Audio, SA. The case concerns the issue with proving trademark use in procedures for revocation.
Sony is an owner of a European word trademark VITA for class 9 – “data carriers containing programs” and “audio and/or image carriers (not of paper).”
Against this mark a revocation request was filed in 2011 based on lack of a real market use. Sony submitted different evidence which showed that the mark was used for video game consoles PlayStation Vita.
The key moment in this dispute was whether video game consoles are “data carriers containing programs” and “audio and/or image carriers (not of paper).”
According to the EUIPO and the General Court this is not the case. The reason is that consumer assessment how and for what the mark is used is crucial. From all submitted evidence and from consumer perspective, the trademark was used for video game devices.
Although these devices technically can fit in the description of “data carriers containing programs” and “audio and/or image carriers (not of paper), practically this is not correct because the main purpose of game consoles are not to store data but to allows playing video games. These consoles are part from class 28 from the Nice classification, not class 9.
The fact that Vita was a trademark with reputation cannot be an obstacle for the revocation because even repute mark has to be used for the goods mentioned in its application.
All in all this case comes to show how important is the correct identification of goods and services for the purpose of trademark filing. What is included in the trademark application defines the scope of protection and based on this scope the mark has to be proved in case of revocation.
Source: Kluwer Trademark Blog
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