JUDGMENT OF THE GENERAL COURT (Third Chamber)
1 September 2021 (*)
(EU trade mark – Revocation proceedings – EU word mark Vita – Genuine use of the mark – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) – Use in connection with the goods in respect of which the mark was registered)
In Case T‑561/20,
Sony Interactive Entertainment Europe Ltd, established in London (United Kingdom), represented by S. Malynicz QC and P. Ruess, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and V. Ruzek, 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 Second Board of Appeal of EUIPO of 22 June 2020 (Case R 425/2020‑2), relating to revocation proceedings between Vieta Audio and Sony Interactive Entertainment Europe,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins (Rapporteur), President, Z. Csehi and G. De Baere, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 8 September 2020,
having regard to the response lodged at the Court Registry on 14 December 2020,
further to the hearing on 10 June 2021,
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 in, inter alia, Class 9 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, 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; thermometers for indoor aquaria and terraria’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 56/2002 of 15 July 2002.
5        The EU word mark Vita was registered on 27 September 2005 under the number 2290385.
6        By an assignment contract signed on 16 March 2011 and recorded in EUIPO’s register on 11 May 2011, the EU word mark Vita was partially transferred to Forrester Ketley Ltd. By an assignment contract signed on 15 September 2011 and recorded in EUIPO’s register on 29 September 2011, that mark was then transferred to Sony Computer Entertainment Europe Ltd, the predecessor in title to the applicant, Sony Interactive Entertainment Europe Ltd. The mark which formed the subject matter of that partial assignment and transfer was registered under the number 9993361. The goods in respect of which that mark was registered are in Class 9 of the Nice Agreement 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’.
7        On 14 October 2011, Vieta Audio, SA filed, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), an application for revocation of the mark referred to in paragraph 6 above in respect of all the goods covered by that mark. In that application, it claimed that the contested mark had not been put to genuine use in the European Union during the relevant period of five years, which ran from 14 October 2006 to 13 October 2011, and that there were no proper reasons for non-use.
8        On 4 May 2012, in response to the application for revocation of the contested mark, Sony Computer Entertainment Europe claimed that the contested mark had been put to genuine use in the European Union during the relevant period in connection with the goods concerned. It explained that it had used that mark in connection with its handheld gaming console named PlayStation Vita and in connection with games and accessories relating to that console. It stated that the name of that new console had been officially announced in June 2011 and had thereafter been promoted extensively until October 2011. It added that it had carried out the official European launch of the PlayStation Vita console at the Gamescom conference which had been held in Cologne (Germany) in August 2011 and that that console had been placed on the market in the European Union on 22 February 2012.
9        In support of its claims, Sony Computer Entertainment Europe submitted a written statement, dated 4 May 2012, drawn up by one of its directors (‘the written statement of 4 May 2012’), 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 (‘the brochure from the Gamescom conference’);
–        a copy of the cover of that brochure, displaying the PlayStation Vita console;
–        a disk 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.
10      On 2 January 2013, Sony Computer Entertainment Europe responded to observations submitted by Vieta Audio 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 that 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.
11      In further observations of 24 April 2013, Sony Computer Entertainment Europe added that, on 25 October 2007, it had launched on the EU market, under the name Aqua Vita, an interactive video game consisting of a virtual aquarium. It stated that that video game had been on sale since that latter date on the EU market in its online shops and indicated the turnover that it had achieved in that market from sales of the game for each year from the game’s launch until 2013. It annexed to its observations screenshots, dated 24 April 2013, from the official PlayStation websites in Spain, Germany and the United Kingdom, which showed that that game was available from its online shops, as well as copies of various articles relating to that game.
12      By decision of 30 June 2014, the Cancellation Division revoked the contested mark in respect of all of the goods for which it had been registered, with effect from the date of the application for revocation.
13      On 28 August 2014, Sony Computer Entertainment Europe filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.
14      On 29 October 2014, Sony Computer Entertainment Europe filed a statement setting out the grounds of its appeal, to which it annexed additional evidence, including photographs of video game cases on which, in addition to the name of the video game concerned, the mark PSVita (which is a short form of PlayStation Vita) appeared.
15      By decision of 12 November 2015 (Case R 2232/2014‑5), the Fifth Board of Appeal of EUIPO upheld the Cancellation Division’s decision and dismissed the appeal.
16      On 21 January 2016, Sony Computer Entertainment Europe brought an action before the Court against the decision of the Fifth Board of Appeal, an action which was registered as Case T‑35/16 and in which it relied on a single plea in law alleging infringement of Article 51(1)(a) of Regulation No 207/2009.
17      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 Court annulled the decision of the Fifth Board of Appeal on the basis of a ground involving a question of public policy, which it had raised of its own motion, namely the inadequate statement of reasons. In particular, in paragraph 43 of that judgment, the Court held that the decision of the Fifth Board of Appeal did not make it possible to determine with sufficient clarity the reasons why that Board of Appeal had taken the view that Sony Computer Entertainment Europe had not proved genuine use of the contested mark in connection with some of the categories of goods in question.
18      Following the judgment of 12 December 2017, Vita (T‑35/16, not published, EU:T:2017:886), the Presidium of the Boards of Appeal referred the case to the Fourth Board of Appeal, under the reference number R 695/2018‑4.
19      By decision of 10 September 2018, the Fourth Board of Appeal dismissed the appeal. It examined and reassessed whether the evidence provided by Sony Computer Entertainment made it possible to establish genuine use of the contested mark. However, it observed at several points that, in the judgment of 12 December 2017, Vita (T‑35/16, not published, EU:T:2017:886), the Court had upheld certain findings of the Fifth Board of Appeal.
20      On 22 November 2018, the applicant brought an action before the Court against the decision of the Fourth Board of Appeal, an action which was registered as Case T‑690/18 and in which it relied on two pleas in law, alleging (i) infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001) and the obligation to state reasons and (ii) infringement of Article 51(1)(a) of Regulation No 207/2009.
21      By its judgment of 19 December 2019, Sony Interactive Entertainment Europe v EUIPO – Vieta Audio (Vita) (T‑690/18, EU:T:2019:894), the Court annulled the decision of the Fourth Board of Appeal. It stated that, in the judgment of 12 December 2017, Vita (T‑35/16, not published, EU:T:2017:886), it had not ruled on the substantive legality of the decision of the Fifth Board of Appeal and that the Fourth Board of Appeal had therefore erred in finding that the findings of the Fifth Board of Appeal regarding the application of Article 51(1)(a) of Regulation No 207/2009 had been upheld by the Court. The Fourth Board of Appeal had therefore failed to fulfil its obligation, under Article 65(6) of Regulation No 207/2009, to take the necessary measures to comply with the judgment of 12 December 2017, Vita (T‑35/16, EU:T:2017:886), namely to take a fresh decision on all the relevant issues with regard to the application of Article 51(1)(a) of Regulation No 207/2009.
22      Following the judgment of 19 December 2019, Vita (T‑690/18, EU:T:2019:894), the Presidium of the Boards of Appeal referred the case to the Second Board of Appeal, under the reference number R 425/2020‑2.
23      By decision of 22 June 2020, the Second Board of Appeal dismissed the appeal (‘the contested decision’).
24      In the first place, it found that, since the contested mark had been registered on 27 September 2005 and the application for revocation had been filed on 14 October 2011, the applicant had to prove genuine use of that mark in the European Union during the five-year period preceding that date, that is to say, from 14 October 2006 to 13 October 2011 inclusive, in respect of ‘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’ in Class 9 (paragraphs 42 and 43 of the contested decision).
25      In the second place, regarding the written statement of 4 May 2012, the Second Board of Appeal found that it was of low probative value and had to be supported, within the context of an overall assessment of the evidence, by independent evidence (paragraphs 44 to 48 of the contested decision).
26      In the third place, it found that the evidence which the applicant had submitted to prove use of the contested mark referred, on the one hand, to the alleged use of the mark PlayStation Vita (or PSVita) for a handheld gaming console, related games and peripherals, including memory cards, and, on the other hand, to the alleged use of the mark Aqua Vita for a computer game. It therefore examined whether genuine use of the contested mark had been proved on the basis of the claimed use of each of those marks, assessed separately (paragraphs 49 and 51 of the contested decision).
27      As regards the marketing of the PlayStation Vita (or PSVita) console as a ‘data carrier containing programs’ and an ‘audio and/or image carrier (not of paper)’, the Second Board of Appeal found, first, that those goods were devices the function of which was to store data (programs, audios and images), as was the case of devices like memory cards, USBs, CD-ROMs or hard disks. It found, secondly, that all the evidence referred to the promotion and marketing of the PlayStation Vita console as a handheld gaming console and not as a ‘data carrier containing programs’. The Second Board of Appeal took the view that, although the data carrier function was mentioned in the evidence submitted, it was of a secondary nature since it served only to store the system software. From the point of view of the consumer, the Second Board of Appeal stated that the storage capacity was a necessary function to operate the PlayStation Vita console rather than the exclusive purpose or one of the main purposes of the console. According to the Board of Appeal, those arguments also applied to ‘audio and/or image carriers (not of paper)’. Consequently, the Second Board of Appeal concluded that the alleged use of the PlayStation Vita console did not amount to use for the categories of goods corresponding to ‘data carriers containing programs’ and ‘audio and/or image carriers (not of paper)’ (paragraphs 61 to 64 of the contested decision).
28      As regards the ‘magnetic tape cassettes, audio tapes, audio compact discs, DAT (digital audio tape) cassettes, videodiscs, videotapes, exposed films, lithographs’, the Second Board of Appeal observed that the applicant had not claimed that the contested mark had been used in connection with those goods (paragraph 65 of the contested decision).
29      Regarding the use of the mark PSVita in connection with memory cards, the Second Board of Appeal found that it was common ground that a memory card was a data carrier. It stated that the reproductions of memory cards bearing that mark that had been submitted by the applicant could therefore be classified as ‘data carriers containing programs’ as long as they contained programs. However, the Second Board of Appeal observed that the PSVita memory card was a card to enhance the memory of the gaming console and that its purpose was therefore to increase storage capacity. As it was an empty card that could carry data, as well as audio and images, it concluded that the claimed use for ‘data carriers containing programs’ had not been proved. It added that the relevant items of evidence were also insufficient to prove the time and extent of use. It therefore rejected the applicant’s argument that the contested mark had been put to genuine use in connection with ‘memory cards’ during the relevant period (paragraphs 71 to 76 of the contested decision).
30      Regarding the use of the mark PSVita on a game cartridge marked PSVita and LittleBIG Planet, the Second Board of Appeal found that, even assuming that a game cartridge was covered by the wording ‘data carriers containing programs’, the relevant document in the file was undated. It was therefore not possible to deduce with certainty that that cartridge had actually been marketed in the European Union during the relevant period or to what extent it had been marketed (paragraph 77 of the contested decision).
31      The Second Board of Appeal thus concluded that the evidence submitted by the applicant did not prove that the contested mark had been put to genuine use in connection with ‘data carriers containing programs; 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’ (paragraph 79 of the contested decision).
32      As for the use of the mark PSVita in connection with ‘computer software’, the Second Board of Appeal found that the evidence regarding video games did not prove genuine use of the contested mark. It stated that those games were distinguished and identified by their own word or figurative marks and that the reference, as the case may be, to PlayStation Vita or to PS 3, merely indicated that those games could be played on those consoles. Furthermore, it observed that other items of evidence did not relate to the relevant period or were undated. It therefore concluded that the contested mark had not been put to genuine use in connection with ‘computer software’ during the relevant period (paragraphs 82 to 86 of the contested decision).
33      As regards the use of the mark Aqua Vita in connection with ‘computer software’, the Second Board of Appeal found that the evidence relating to the game bearing that name failed to show the extent to which that mark had been used during the relevant period. First, it stated that the sales figures provided by the applicant were not confirmed by any other evidence and, secondly, that the two examples of emails did not constitute proof of genuine use because the extent of the sales attested to in those emails was insignificant. Although the applicant had stated before the adjudicating bodies of EUIPO that invoices in the traditional sense had not been produced and that email confirmations of online purchases had not been stored, the Second Board of Appeal found that the applicant could have submitted other relevant evidence to confirm the sales figures, like, for example, annual reports or certified accounts. The Second Board of Appeal therefore concluded that the evidence submitted was insufficient to prove use of the mark Aqua Vita in relation to ‘computer software’ (paragraphs 90 to 93 of the contested decision). It took the view that the question of whether use of the mark Aqua Vita amounted to genuine use of the contested mark or altered its distinctive character could be set aside (paragraph 89 of the contested decision).
34      Consequently, the Second Board of Appeal found that, considered as a whole, the various items of evidence adduced by the applicant were not sufficient to prove that the contested mark had been put to genuine use in the European Union during the relevant period in connection with the goods for which it had been registered (paragraph 94 of the contested decision).
Forms of order sought
35      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and Vieta Audio to pay the costs.
36      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
37      Given the date on which the application for revocation in question was filed, namely 14 October 2011, which is decisive for the purposes of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 6, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3).
38      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision, by the applicant in the arguments put forward and by EUIPO in its written pleadings to Article 58(1)(a) of Regulation 2017/1001 must be understood as referring to Article 51(1)(a) of Regulation No 207/2009, the wording of which is substantively identical.
39      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 51(1)(a) of Regulation No 207/2009. That plea is divided into four parts.
40      By the first part, the applicant claims that the Second Board of Appeal misinterpreted the meaning of the expressions ‘data carriers containing programs’ and ‘audio and/or image carriers (not of paper)’. By the second part, it submits that the Second Board of Appeal erred in concluding that the evidence of use concerning the marketing of the PlayStation Vita console was insufficient concerning the time and place of use of the contested mark. By the third part, it claims that the Second Board of Appeal erred in concluding that the use of the mark PSVita on video games did not constitute use in connection with ‘computer software’. By the fourth part, it argues, first, that the Second Board of Appeal erred in finding that the evidence was insufficient in relation to the game Aqua Vita and, secondly, that the Board of Appeal also failed to consider whether the mark Aqua Vita amounted to use of the contested mark in relation to ‘computer software’.
The first part, alleging misinterpretation of the expressions ‘data carriers containing programs’ and ‘audio and/or image carriers (not of paper)’
41      The applicant claims that the Second Board of Appeal did not correctly interpret the expressions ‘data carriers containing programs’ and ‘audio and/or image carriers (not of paper)’ and consequently erred in finding that the use of the contested mark in relation to the marketing of the PlayStation Vita console did not constitute use of the contested mark in connection with those categories of goods.
42      In the first place, the applicant argues that, in the light of their plain and natural meaning, the words ‘data carriers containing programs’ cover any device which carries data that includes computer programs and that there is no limitation as to the purpose of the device. It submits that the Second Board of Appeal’s interpretation that ‘data carriers containing programs’ are devices the function of which is to store data (programs, audios and images), like, for example, memory cards, USBs, CD-ROMs or hard disks, is unduly restrictive.
43      According to the applicant, the concept of ‘carrier’ is broader in scope than that of a data storage device and is entirely function-neutral. It argues that such a device may not only store data or programs, but may also use them in order to perform certain functions. By way of example, the applicant refers to an electronic music player, which is capable of storing a library of songs and playing them by means of its own loudspeakers. The applicant submits that, in addition to not realising that the range of goods included in Class 9 is very wide, the Second Board of Appeal did not take into account the fact that the description of the goods covered included the term ‘programs’, which, in the applicant’s view, indicates that the device has a function other than that of storing data. It argues that the PlayStation Vita console is therefore clearly a ‘data carrier’ and that the evidence shows that it contains programs.
44      In the second place, the applicant complains that the Second Board of Appeal did not take into consideration the evidence that it had submitted regarding the definition of the concept of ‘data carriers’, namely extracts from online dictionaries of computer terminology, from which it is apparent that that concept covers any medium that is capable of holding data. The applicant argues that when that concept is accompanied by the words ‘containing programs’, it designates more specifically media that can at least store (and also, probably, read or record) computer programs, such as computers with hard drives, memory cards, flash drives, computer consoles and handheld gaming consoles.
45      In the third place, the applicant submits that, where, as here, the relevant goods are defined by reference to their nature (carriers of data, music or images) without reference to their function, it is not relevant to identify their principal or ancillary functions and decide between them. It maintains that, even if it were relevant, then the right approach with regard to products which have multiple functions would be to consider them as proving use in relation to those various products. By way of example, the applicant refers to a clock radio and a smartphone. It submits that the General Remarks to the Nice Classification, in the version applicable in the present case, state that a finished product which is a multipurpose composite object may be classified in all classes that correspond to any of its functions or intended purposes. It argues that the corollary of this is that multi-functional products are capable of being put to genuine use in two or more classes or for two or more functions. It claims that, in the present case, the PlayStation Vita console was marketed as being not only a gaming console but a device on which programs were pre-installed and on which others could subsequently be installed. It maintains that it was also marketed as a device which was a multimedia storage and playing device.
46      In the fourth place, the applicant submits that the words ‘audio and/or image carriers (not of paper)’ also have their ordinary meaning. It argues that the Second Board of Appeal’s interpretation is unduly restrictive and is contrary to the market reality of electronic music players. It states that those terms are function-neutral and that they could therefore cover devices such as a portable navigation system which has a screen showing the terrain and voice guidance, or even an Apple iPad. In its view, a gaming console is also a means of carrying audio and images.
47      EUIPO disputes the applicant’s arguments.
48      Article 51(1)(a) of Regulation No 207/2009 provides that the rights of the proprietor of the EU trade mark are to be declared to be revoked on application to EUIPO or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years, the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
49      Under the law applicable to requests for proof of use submitted, as in the present case, before 1 October 2017, that is to say, under Rule 22(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 10(3) and (4) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), which is applicable to revocation proceedings pursuant to Rule 40(5) of that regulation (now Article 19(1) of Delegated Regulation 2018/625), the proof of use must concern the place, time, extent and nature of use of the mark and is, in principle, to be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001).
50      In interpreting the concept of genuine use, account should be taken of the fact that the ratio legis of the requirement that the mark must have been put to genuine use is not to assess commercial success, to review the economic strategy of an undertaking or to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 32 and the case-law cited).
51      As is clear from the case-law, there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it is registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
52      Furthermore, when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods and services covered by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 13 February 2015, Husky CZ v OHIM – Husky of Tostock (HUSKY), T‑287/13, EU:T:2015:99, paragraph 63 and the case-law cited).
53      Lastly, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 15 September 2011, centrotherm Clean Solutions v OHIM – Centrotherm Systemtechnik (CENTROTHERM), T‑427/09, EU:T:2011:480, paragraph 30 and the case-law cited).
54      It is in the light of those considerations that the merits of the applicant’s claims must be examined.
55      As the Second Board of Appeal rightly found in paragraphs 42 and 43 of the contested decision and as is common ground between the parties, the applicant had to prove genuine use of the contested mark in connection with ‘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’ in Class 9 in the territory of the European Union during the five-year period which ran from 14 October 2006 to 13 October 2011.
56      The applicant does not dispute that it has not proved genuine use of the contested mark in connection with ‘magnetic tape cassettes, audio tapes, audio compact discs, DAT (digital audio tape) cassettes, videodiscs, videotapes, exposed films, lithographs’ in Class 9.
57      The evidence essentially consists of promotional and advertising material relating to the PlayStation Vita (or PSVita) console, of games to be played on that console and of the written statement of 4 May 2012, to which that evidence was annexed. In order to assess the evidential value of a document, regard should be had first and foremost to the credibility of the account it contains. It is then necessary to take account, in particular, of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the document appears sound and reliable. Since that written statement was drawn up by one of the applicant’s directors, it cannot have the same evidential value as a statement by a third party or a person who is unconnected with the applicant. Consequently, that statement is not sufficient in itself and is merely an indication which needs to be confirmed by other evidence (see, to that effect, judgment of 21 September 2017, Repsol YPF v EUIPO – Basic (BASIC), T‑609/15, EU:T:2017:640, paragraph 64 and the case-law cited).
58      The applicant’s claim that the Second Board of Appeal did not take into consideration the evidence which it had submitted regarding the definition of the concept of ‘data carrier’ in online dictionaries of computer terminology cannot succeed. As EUIPO rightly observes, it is possible to deduce from the definition put forward by the applicant and from that referred to in paragraph 59 of the contested decision that both of those definitions agree on the fact that the concept of ‘data carrier’ covers any device the function of which is, in essence, to store data. The addition of the word ‘programs’ has no bearing on that finding.
59      Since consumers primarily search for a product or service capable of meeting their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in examining whether genuine use has been proved in connection with the goods or services in respect of which the contested mark has been registered (see, by analogy, judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 29). That can be deduced from the fact that, according to the case-law, genuine use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 36). The importance of the criterion of the purpose is also consistent with the case-law which states that, when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing, in particular, whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods and services covered by the mark (see paragraph 52 above).
60      In the light of the case-law cited above, the Second Board of Appeal could validly take the view that the applicant had not demonstrated that the marketing of the PlayStation Vita console was aimed at creating or had created a market share for ‘data carriers containing programs’. It is apparent from the evidence, such as, for example, the brochure from the Gamescom conference, according to which the PlayStation Vita console is ‘a powerful next generation gaming system’, that it is the gaming experience which has been promoted and which will induce consumers or end users actually to buy the PlayStation Vita console and connect it with the proprietor of the contested mark, rather than its potential storage capacities.
61      It is true that those handheld gaming consoles have a built-in data storage device. However, as the Second Board of Appeal rightly found, the data storage capacities are listed within the technical specifications and have been described as serving the storage of system software only. Consequently, the data storage functionality has been presented as being only a secondary component of the PlayStation Vita console and it will be perceived as such by the consumer. That functionality is purely ancillary in relation to the purpose sought by the consumer, namely that of making it possible to play games on a device which can easily be transported.
62      In the same way, the evidence of use with regard to a handheld gaming console cannot prove genuine use in connection with ‘audio and/or image carriers (not of paper)’. Contrary to what the applicant claims, the Second Board of Appeal’s interpretation is not unduly restrictive or contrary to the market reality of electronic music players. First of all, the applicant has not established that the gaming console at issue had been marketed as an electronic music player. Furthermore, as the Second Board of Appeal correctly observed in paragraph 63 of the contested decision, the fact that the PlayStation Vita console might be capable of playing sounds and showing images does not make it an ‘audio or image carrier’. What is more, that is a functionality which has been presented as being only a secondary component of the handheld gaming console and will be perceived as such by the consumer. That functionality is therefore also purely ancillary in relation to the purpose of the device in question, namely that of making it possible to play games on a device which can easily be transported.
63      It follows that the applicant’s arguments based on the alleged multifunctionality of the PlayStation Vita console are also irrelevant because that device is not a finished product which is a multipurpose composite object, like, for example, a clock radio. In the present case, the functionalities of storage and the playing of sounds and showing of images are only ancillary to the main function, which is that of making it possible to play games on a device which can easily be transported.
64      The first part of the single plea must therefore be rejected as unfounded.
The second part, alleging an incorrect assessment of the evidence regarding the time and place of use of the contested mark
65      In the first place, the applicant claims that the Second Board of Appeal erred in taking into account, in paragraph 61 of the contested decision, the fact that the evidence of a promotional nature which it had provided did not refer to the expression ‘data carriers containing programs’. It submits that many products are marketed without referring to the technical terms used in the lists of goods and services.
66      In the second place, the applicant claims that the Second Board of Appeal ignored the significant evidence that it had filed, which establishes that the PlayStation Vita console was marketed not just as a games console, but also as a computerised device with a hard drive that contained pre-installed programs and could subsequently have other programs or applications installed onto it by users. It refers to the applications Near, Party, Welcome Park, and t@g and also to the Facebook and Twitter applications which were specifically designed for installation onto the console. It submits that the device in question is therefore a ‘data carrier containing programs’.
67      In the third place, the applicant complains that the Second Board of Appeal did not consider whether the evidence showed genuine use of the contested mark in connection with ‘audio and/or image carriers (not of paper)’. It claims that it is clear that a gaming console on which audiovisual media can be stored and played comes within that category of goods. In support of that argument, it cites a number of references, in the promotional material, to the ‘multimedia’ functionality of the PlayStation Vita console.
68      EUIPO disputes the applicant’s arguments.
69      First, it must be stated that the claim that the Second Board of Appeal erred in taking into account the way in which the goods were described in the promotional and advertising material cannot be upheld. It must be borne in mind that, as has already been stated in paragraph 52 above, when assessing whether use of the contested trade mark is genuine, regard must be had to whether the commercial use of the mark is real. Furthermore, it is clear from the case-law cited in paragraph 53 above that genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.
70      Secondly, as EUIPO rightly points out, the fact that the device in question contains pre-installed applications or programs does not show that its principal purpose, or one of its main purposes, is that of a ‘data carrier containing programs’. It is apparent from the evidence submitted in the present case that the applications mentioned are related to the use of the console for playing games and facilitate that use in that they allow gamers to communicate, provide a guide to using the console or show other gamers’ locations. The ancillary nature of that functionality, in relation to that of playing games, is shown, for example, by the fact that the promotional material states that the inclusion of applications such as Party ‘introduc[e] … a social gaming revolution’.
71      Thirdly, the applicant’s arguments do not invalidate the Second Board of Appeal’s assessment of the evidence. It is apparent from the evidence referred to in the application that the ‘multimedia’ functionality was aimed at inducing consumers to purchase the device in question because it was pointed out that that functionality would improve the gaming experience, since ‘fans c[ould] listen to tracks from their music library whilst playing games’. Furthermore, although the ‘music’, ‘video’ and ‘photo’ functionalities were described in the advertising material in order to promote the sale of the console, that does not establish that the contested mark has been used for the purposes of obtaining market shares in respect of ‘data carriers containing programs’ or ‘audio and/or image carriers’. As has already been held in paragraphs 61 and 62 above, as regards the PlayStation Vita console’s storage capacities and capacities for playing audio and showing images, the ‘multimedia’ functionality is purely ancillary in relation to the purpose of the device in question, namely that of making it possible to play games on a device which can easily be transported.
72      The second part of the single plea must therefore be rejected as unfounded.
The third part, relating to the assessment of the evidence regarding games bearing the indication PSVita
73      The applicant submits that the Second Board of Appeal did not take account of the evidence which it had submitted showing genuine use of the contested mark in connection with ‘computer software’.
74      It argues that the Second Board of Appeal erred in not taking into consideration the fact that a game for a gaming console normally bears an indication that it is compatible with a particular device, in the present case the mark PSVita on a game which is compatible with the PlayStation Vita console. It claims that that indication of compatibility constitutes use of the contested mark under licence with the consent of the proprietor. The applicant adds that consumers consider that indication to be an important feature of those games and so it should be regarded as use in relation to those goods. It submits that what is involved here is a form of co-branding with the other trade marks appearing on that software.
75      It argues that, consequently, the Second Board of Appeal did not take into account the fact that the written statement of 4 May 2012 established that there had been genuine use of the contested mark in relation to those games, and thus in relation to ‘computer software’ such as Twisted Metal, Resistance 3, Uncharted 3, Tekken, and God of War. According to the applicant, each game offered for sale informs the consumer that it is a PSVita game and that it is compatible with that console. Furthermore, it submits that both the console and the games for that console contain encrypted software which enables the games to be played on the console. In addition, it claims that, as is apparent from the evidence consisting of photographs of game cases, the contested mark is affixed to the cases in which those games are sold.
76      EUIPO disputes the applicant’s arguments.
77      According to the applicant, the games designed to be played on the PlayStation Vita console are ‘computer software’. In order to prove genuine use of the mark in connection with that category of goods, the applicant submits that it is apparent from the evidence, in particular from the brochure from the Gamescom conference, that the mark PSVita appears on those games. It also relies on the written statement of 4 May 2012 and on the presence of that mark on the photographs of game cases.
78      However, as the Second Board of Appeal rightly found in paragraph 81 of the contested decision, the brochure from the Gamescom conference does not prove genuine use of the contested mark in relation to games designed to be played on the PlayStation Vita console. That brochure merely contains information about those games with the explanatory indication that their format is that of the PlayStation Vita console. Those games are distinguished and identified by their own word and figurative marks. There is no indication in the brochure itself about the use of the contested mark as a trade mark in relation to those games. The indication of the format PlayStation Vita and the inclusion of the mark PSVita at the bottom of the pages describing those goods can be understood only as referring to the gaming console on which those games can be played, in the same way as other games are described on other pages of the brochure with the indication that they have the format PS 3, or even the format PSP, meaning that they can be played on gaming consoles bearing those names.
79      Contrary to what the applicant claims, the Second Board of Appeal did not err in not taking into consideration the fact that a computer game normally bears a mark indicating that it is compatible with a particular device. Not only was that fact taken into account, but it rightly influenced the Second Board of Appeal’s assessment that the evidence submitted in the present case showed that that indication of compatibility did not correspond to use of the contested mark in accordance with the essential function thereof, which was to guarantee the identity of the origin of the goods or services in respect of which it had been registered.
80      The applicant does not deny that the photographs of game cases are undated and do not therefore contain any information regarding the time, place and extent of use.
81      It is true that, in the written statement of 4 May 2012, it is claimed that the contested mark has been used in relation not only to the PlayStation Vita console, but also in relation to games. However, as EUIPO rightly points out, in that statement, no information is given regarding, inter alia, the extent of the alleged use which was made of the contested mark in relation to that software. Furthermore and above all, the contested mark does not appear to be used in direct relation to those goods in any of the items of evidence annexed to that statement, which comes from one of the applicant’s directors and is not therefore sufficient in itself (see paragraph 57 above). In those items of evidence, the games software in question is only presented as being suitable for the PlayStation Vita console. However, it cannot be held that the contested mark has been put to genuine use in connection with that games software by virtue of the mere fact that that software has been marketed as being compatible with that console.
82      The third part of the single plea must therefore be rejected as unfounded.
The fourth part, relating to the assessment of the evidence regarding the game Aqua Vita
83      The applicant, relying on sales of the game Aqua Vita, complains that the Second Board of Appeal erred in finding that the evidence of genuine use of the contested mark in connection with ‘computer software’ was insufficient. It submits that the sales figures relating to that game, which were provided in the form of a witness statement, attest to the number of units of that product which were sold in the European Union and constitute sufficient proof of use of the contested mark in relation to ‘computer software’ during the relevant period.
84      The applicant claims that it has not been able to provide evidence in support of that statement because the sales figures in respect of that game do not give rise to traditional invoices on paper. It states that the purchaser downloads the software from the applicant’s website and that payment is made by means of a customer account specifically created for that purpose. Confirmations of purchases are then sent to the purchasers by email, but they are not stored.
85      EUIPO disputes the applicant’s arguments.
86      The decision of the Second Board of Appeal is based essentially on the finding that the applicant failed to show the extent to which the mark Aqua Vita had been used during the relevant period. It is therefore necessary to examine the validity of that finding in the light of the arguments put forward by the applicant.
87      Contrary to what the applicant claims, the sales figures in respect of the game Aqua Vita were not provided ‘in the form of a witness statement’. Those sales figures appear in the body itself of the observations submitted by the applicant’s representative on 24 April 2013, and not in a statement which is one of the ‘statements in writing sworn or affirmed or having a similar effect under the law of the State in which the statement is drawn up’ within the meaning of Article 78(1)(f) of Regulation No 207/2009. As such, they need to be confirmed by other evidence within the meaning of the case-law referred to in paragraph 57 above.
88      As the Second Board of Appeal rightly pointed out in paragraph 90 of the contested decision, those sales figures are not confirmed by any other evidence. While it is true that, on 29 October 2014, the applicant provided two emails showing two instances of actual sales of the game Aqua Vita, that cannot, however, constitute proof of genuine use because the extent of those sales is insignificant. The applicant’s claim that the sales in question do not give rise to the issuing of traditional invoices on paper and that, consequently, it is difficult to obtain relevant evidence to confirm the sales figures is hardly convincing. As the Second Board of Appeal pointed out in paragraph 92 of the contested decision, the applicant could have submitted other relevant evidence, such as annual reports or certified accounts.
89      Consequently, the Second Board of Appeal was right in finding that the evidence relating to the game Aqua Vita that the applicant had submitted was insufficient to prove genuine use of the contested mark in relation to ‘computer software’.
90      The fourth part of the single plea must therefore be rejected as unfounded. It follows that the action must be dismissed in its entirety.
Costs
91      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Sony Interactive Entertainment Europe Ltd to pay the costs.
Collins
Csehi
De Baere
Delivered in open court in Luxembourg on 1 September 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.