The European Court has ruled in the case T‑463/20, Sony Interactive Entertainment Europe Ltd v Wai Leong Wong, which focuses our attention on the role of stylized elements in the process of trademarks comparison.
In 2017, Mr. Wai Leong Wong file an application for EU trademark GT RACING for class 18: ‘Leather and imitations of leather and goods made of these materials (not included in other classes) namely leather bags, cases, holdalls, rucksacks, wallets, purses, luggage and suitcases; bags; sports bags; trunks and travelling bags; vanity cases; holdalls, back packs and rucksacks; wallets, key cases, purses and pouches; credit card cases, business card cases; tote bags, bottle bags, record bags, book bags; handbags; shopping bags; cases, luggage and suitcases, weekend bags; briefcases; umbrellas and walking sticks; golf umbrellas; parts, fittings and accessories for all the aforesaid goods’.
Against this application, SONY filed an opposition based on the following earlier rights:
A figurative EU mark No 820738 for classes 9, 16, 28:
A word EU mark for GRAN TURISMO NETWORK, No 2261873 for classes 9, 16, 28, 41 и 42
A combined EU mark No 12340981 for classes 9, 16, 28 и 41:
A combined EU mark No 12341061 for classes 9, 16, 28 и 41:
Unregistered EU trademarks for the above signs used in ralation to different goods and services for video gaming.
According to the EUIPO the cited earlier trademarks are not similar to the mark applied for. Most of the word parts in these trademarks are completely different. When it comes to the element GT, the Office considered that it is not similar to the figurative trademark No 820738 because there is no phonetic, visual, and conceptual similarity.
The reason for this conclusion is that the earlier mark is stylized in such a way that requires from consumers a serious imagination in order to discover the letters GT. Most likely most consumers will recognize this sign only as an abstract and unitary shape
The European Court upheld this decision in its entirety.
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.
Sony Corporation hadn’t given up and won a trademark dispute in Japan. The case concerns a trademark SONICODE filed by Field System Inc. for classes 9, 38 and 41.
Against this mark an opposition was filed by Sony based on early registered trademarks SONY for the similar goods and services.
The Japan Patent Office dismissed the opposition finding both marks as dissimilar. Three years later Sony filed a request for invalidation. This is possible according to the law in Japan.
The ground was that because of the serious reputation trademarks SONY have consumers would discover easily the SONI part in the later mark as similar to SONY. What’s more this was particularly possible in the light of the fact that the second part CODE is not so distinctive.
To support their arguments SONY gave an example with voice assistants offered by Google, Apple, Microsoft and Amazon. When someone ask for SONICODE the first information those assistants provide is for SONY.
This time, the Patent Office upheld the Sony’s position and invalidate the SONICODE mark. According to the office, consumers can spot easily the SONI part in the later mark and connect it with the earlier SONY trademarks from visual and phonetic point of view. One of the reason for this, apart from the high reputation that SONY has, is the fact that consumers can perceive the later mark as consisting of two words SONI and CODE.