JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
12 December 2017 (*)
(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 question — Obligation to state reasons)
In Case T‑35/16,
Sony Computer Entertainment Europe Ltd, established in London (United Kingdom), represented by S. Malynicz QC,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. Kunz, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Vieta Audio, SA, established in Barcelona (Spain), represented by I. Barroso Sánchez-Lafuente, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 12 November 2015 (Case R 2232/2014-5), relating to revocation proceedings between Vieta Audio and Sony Computer Entertainment Europe,
THE GENERAL COURT (Eighth Chamber),
composed of A.M. Collins (Rapporteur), President, M. Kancheva and R. Barents, Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 21 January 2016,
having regard to the response of EUIPO lodged at the Court Registry on 11 May 2016,
having regard to the response of the intervener lodged at the Court Registry on 26 May 2016,
having regard to the measures of organisation of procedure of 15 May 2017,
further to the hearing on 13 July 2017, in which the intervener did not participate,
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’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 56/2002 of 15 July 2002.
5        The mark applied for was registered on 27 September 2005 under No 2290385.
6        By fax dated 28 March 2011, Forrester Ketley Ltd informed EUIPO that, on 16 March 2011, Vitakraft-Werke Wührmann & Sohn had transferred to it its rights in the trade mark Vita in so far as those rights covered the goods mentioned in paragraph 3 above. Forrester Ketley is a services company which represents, among others, the applicant, Sony Computer Entertainment Europe Ltd, with respect to trade mark rights before EUIPO and which, in the present case, acted solely on that company’s instructions.
7        The trade mark Vita, as it resulted from this partial assignment, was registered under No 9993361 (‘the contested mark’).
8        By fax of 28 September 2011, Forrester Ketley informed EUIPO that it had transferred the contested mark to the applicant on 15 September 2011.
9        On 14 October 2011, the intervener, Vieta Audio SA, filed an application, pursuant to Article 51(l)(a) of Regulation No 207/2009 (now Article 58(l)(a) of Regulation 2017/1001), for revocation of the contested mark in relation to all of the goods which it covered. In that application, the intervener argued that that mark had not been put to genuine use in the European Union during the relevant five-year period, which ran from 14 October 2006 to 13 October 2011, and that there were no proper reasons for that non-use.
10      On 4 May 2012, in response to the application for revocation of the contested mark, the applicant asserted that the contested mark had been put to genuine use in the European Union during the relevant period in relation to the goods in question. It asserted that it had used that mark for its handheld gaming console PlayStation Vita (also identified by the sign PSVita) and for games and accessories related to it. It stated that the name of that new console had been officially announced in June 2011 and that thereafter it had been promoted extensively until October 2011. The applicant 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 console had been placed on the market in the European Union on 22 February 2012.
11      In support of its claims, the applicant submitted a written statement, dated 4 May 2012, drawn up by one of its directors, to which the following items were annexed:
–        a press release, dated 7 June 2011, announcing the name of its new handheld gaming console PlayStation Vita;
–        a screenshot, dated 7 June 2011, from the website www.pcmag.com mentioning that announcement;
–        a copy of the applicant’s 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;
–        a copy of the cover of that brochure, displaying the PlayStation Vita console;
–        a diskette 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 on YouTube;
–        a press release issued by the applicant, 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.
12      On 2 January 2013, the applicant responded to observations submitted by the intervener 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 the applicant’s parent company and to Naughty Dog, Inc., an American company that develops video games, which is wholly owned by the same 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.
13      In further observations of 24 April 2013, the applicant 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. The applicant annexed to its observations screenshots, dated 24 April 2013, from the official PlayStation websites in the United Kingdom, Spain and Germany, which showed that that game was available from its online shops, as well as copies of various articles relating to that game.
14      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.
15      On 28 August 2014, the applicant filed an 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.
16      On 29 October 2014, the applicant filed a statement setting out the grounds of its appeal, to which it annexed additional evidence, including photographs of video game boxes on which appeared, in addition to the name of the video game concerned, the sign PSVita.
17      By decision of 12 November 2015 (‘the contested decision’), the Fifth Board of Appeal of EUIPO upheld the decision of the Cancellation Division and rejected the appeal.
18      In the contested decision, in the first place, the Board of Appeal, after recalling the applicable principles (paragraphs 19 to 24 of the contested decision), examined the issue of the period of genuine use of the contested mark (paragraphs 25 to 38 of the contested decision). First of all, the Board of Appeal stated that the relevant period extended from 14 October 2006 to 13 October 2011. Next, it observed, in particular, that the earliest evidence of use submitted by the applicant was the press release of 7 June 2011, which stated that, on the previous day, at the E3 conference — an annual trade show in the United States — the applicant had announced the name of its new handheld game console, the PlayStation Vita (or PSVita), and had provided information about its release date and price. As regards the screenshot, dated 7 June 2011, from the website www.pcmag.com, the Board of Appeal noted that that item also mentioned that announcement, but that no evidence had been furnished to show that the website had been accessed from the European Union. In addition, the Board of Appeal found that the first real use of the contested mark in the European Union had been at the Gamescom conference, held in Cologne between 17 and 21 August 2011, during which promotional material had been distributed (in the form of, inter alia, brochures and CD-ROMs), but that it was not until 22 February 2012, and thus outside the relevant period, that the PlayStation Vita console had been released, inter alia, on the EU market. The Board of Appeal took the view that use during four months of the relevant period (namely the period extending from 7 June to 13 October 2011) could constitute use in terms of time, provided that all of the other conditions were met. Lastly, it stated that there was nevertheless no concrete evidence to show that promotional material had been distributed to participants at the Gamescom conference.
19      In the second place, the Board of Appeal examined the issue of the place of use (paragraphs 39 to 42 of the contested decision). First, it took the view that the use of the term ‘vita’ at the E3 conference could not be regarded as use in the European Union since that conference had taken place in the United States. Next, it stated that the screenshot, dated 7 June 2011, from the website www.pcmag.com could not be taken into consideration because it had not been proven that the website had actually been accessed from the European Union. Lastly, it took the view that, if it was established that advertising material had been distributed during the Gamescom conference in Cologne, there would clearly have been use of the term ‘vita’ in the European Union. It concluded that there had been use of the term ‘vita’ in the European Union in the relevant period.
20      In the third place, the Board of Appeal examined the issue of the nature and extent of use (paragraphs 43 to 52 of the contested decision). After pointing out that most the evidence submitted by the applicant and relating to the relevant period consisted in promotional and advertising material, which it described in more detail in paragraph 44 of the contested decision, it examined the extent to which use of a mark in advertising could constitute genuine use. In that regard, it stated, inter alia, that advertising in advance of the actual marketing of goods or services was generally considered to constitute genuine use if its purpose was to establish a market for those goods or services. It stated that, in the present case, ‘the expectations created all over the world for the launch of the new PlayStation [had given] real marketing power when announcing the name of the new video game console’ (paragraph 49 of the contested decision). The Board of Appeal then concluded that ‘the fact that the evidence of use filed by [the applicant showed] advertising and preparatory acts for putting the new console on the market [complied] with the requirements of genuine use’ (paragraph 50 of the contested decision). Lastly, the Board of Appeal stated, in paragraph 52 of the contested decision, that it was clear from the evidence that the launch of the PlayStation Vita console had been well prepared and carefully planned and that the PlayStation Vita had been announced as a new handheld game console for which specific games had been developed.
21      In the fourth place, the Board of Appeal examined whether the contested mark had been put to genuine use in relation to the goods in question (paragraphs 53 to 69 of the contested decision).
22      In that regard, first, the Board of Appeal stated that the edition of the Nice Classification to be taken into account was the seventh edition, which was in force when the original mark was filed in 2001. According to the Board of Appeal, at that time ‘game consoles’ were already classified as ‘automatic games, other than coin-operated and those adapted for use with television receivers only’ or as ‘games’, which were both in Class 28 ‘and not as “data carriers” in Class 9 or “computer software”’ (paragraph 53 of the contested decision). The Board of Appeal added that, while it was true that ‘amusement apparatus adapted for use with television receivers only’ was classified in Class 9, those goods were different from the goods for which the contested mark had been registered (paragraph 54 of the contested decision).
23      Next, the Board of Appeal found that the applicant had provided evidence showing that the purpose of the advertising campaigns which preceded the launch of the new PlayStation console had been to create awareness of the console and of the new games to be played on the new device, but that there was no reference to ‘data carriers’ or to ‘computer software’ (paragraphs 55 and 56 of the contested decision). It took the view that it was necessary to determine whether ‘the goods used [fell] under the literal meaning of the listed goods (in particular, data carriers and computer software)’ (paragraph 58 of the contested decision), before pointing out that ‘data carriers containing programs’ were devices which had the function of storing data, such as ‘memory cards, USBs, CD-ROMs, hard discs etc.’ and that, even if game consoles could store data, that was not their principal function (paragraph 59 of the contested decision).
24      The Board of Appeal concluded from the foregoing that the Cancellation Division had acted correctly in finding that all of the evidence filed by the applicant, and the statement of 4 May 2012, showed evidence of use in respect of goods in Class 28 and not for the goods covered by the contested mark (paragraph 60 of the contested decision).
25      With regard to the video game Aqua Vita, the Board of Appeal stated, inter alia, that the applicant’s sales figures were uncorroborated by invoices or other evidence, that, in addition, the figures did not show extensive use of that game given that the relevant market was the whole of the European Union, and that the fact that that game was available on the EU market from online shops was not sufficient to establish use of the contested mark.
Forms of order sought
26      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
27      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
28      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 51(l)(a) of Regulation No 207/2009. That plea is divided into five parts.
29      The first, fourth and fifth parts all relate to the assessment of the evidence submitted by the applicant for the purpose of demonstrating genuine use of the contested mark in relation to the goods in question, an issue which is examined in paragraphs 53 to 69 of the contested decision. Thus, in the context of the first part, the applicant claims that the Board of Appeal incorrectly construed the expressions ‘data carriers containing programs’ and ‘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’ and incorrectly assessed the evidence which the applicant had submitted with a view to showing genuine use of the contested mark in relation to those goods. In the context of the fourth part, the applicant argues that the Board of Appeal disregarded evidence showing genuine use of the contested mark in relation to ‘software’. In the context of the fifth part, the applicant complains that the Board of Appeal wrongly found that the evidence showing genuine use of the contested mark in relation to the game Aqua Vita was insufficient.
30      The first subparagraph of Article 15(1) of Regulation No 207/2009 (now the first subparagraph of Article 18(1) of Regulation 2017/1001) provides:
‘If, within a period of five years following registration, the proprietor has not put the [EU] trade mark to genuine use in the [European Union] in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the [EU] trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.’
31      Under Article 51(1)(a) of Regulation No 207/2009, 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.
32      Pursuant to 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 Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)), which is applicable to revocation proceedings pursuant to Rule 40(5) of that regulation (now Article 19(1) of Delegated Regulation 2017/1430), the proof of use must concern the place, time, extent and nature of use of the mark and is to be limited, in principle, 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).
33      For the interpretation of the notion of genuine use, account must be taken of the fact that the rationale for the requirement that the mark must have been put to genuine use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see judgments of 8 July 2004, MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 32 and the case-law cited, and of 27 September 2007, La Mer Technology v OHIM — Laboratoires Goëmar (LA MER), T‑418/03, not published, EU:T:2007:299, paragraph 53 and the case-law cited).
34      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 or services for which it is registered, in order to create or preserve an outlet for those goods or 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). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgment of 6 October 2004, Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, EU:T:2004:292, paragraph 26 and the case-law cited).
35      Furthermore, in the assessment of whether use of the trade mark is genuine, regard must be had to all of the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly the use regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market 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 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 30 and the case-law cited).
36      Moreover, use of a mark may be regarded as genuine where that mark is used to secure customers, particularly in the form of advertising campaigns (see, to that effect, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 37).
37      It should also be pointed out that, under point (a) of the second subparagraph of Article 15(1) of Regulation No 207/2009 (now point (a) of the second subparagraph of Article 18(1) of Regulation 2017/1001), proof of genuine use of a trade mark also includes proof of its use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.
38      Lastly, genuine use of a trade mark cannot be proven by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 23 September 2009, Cohausz v OHIM — Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited). It is therefore necessary to carry out an overall assessment which takes into account all the relevant factors of the particular case and implies a degree of interdependence between the factors taken into account (see judgment of 18 January 2011, Advance Magazine Publishers v OHIM — Capela & Irmãos (VOGUE), T‑382/08, not published, EU:T:2011:9, paragraph 30 and the case-law cited).
39      In the present case, it was for the applicant to provide evidence of genuine use of the contested mark in respect of three types of specific goods, namely ‘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’ and ‘computer software’.
40      First, as regards ‘data carriers containing programs’, it is clear from the case file that the evidence relied on by the applicant consisted in the statement of 4 May 2012 as well as in the promotional and advertising material and press articles relating to the PlayStation Vita console. According to the applicant, that console belongs to such a category of goods in so far as it is marketed as a computer device with a built-in hard drive on which applications are pre-installed. Furthermore, the applicant produced reproductions of memory cards bearing the sign PSVita, submitting that such memory cards could also be classified as ‘data carriers containing programs’.
41      Secondly, as regards ‘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’, it is clear from the case file that, according to the applicant, the PlayStation Vita console also belongs to such a category of goods in so far as it has a microphone and a camera and allows the user to download, store and view multimedia files (images, audio and video files). With a view to proving genuine use of the contested mark for that category of goods, the applicant referred to the statement of 4 May 2012 as well as to the promotional and advertising material and press articles relating to that console mentioned in paragraph 40 above.
42      Thirdly, the applicant relied on the fact that the video games intended to be played on the PlayStation Vita console were ‘computer software’. In order to prove genuine use of the contested mark for that category of goods, the applicant argued that the sign PSVita appeared not only on the PlayStation Vita console but also on those video games. In that regard, it referred to the statement of 4 May 2012, to the advertising brochure referred to in the third indent of paragraph 11 above, and to photographs of video game boxes on which the sign PSVita appears, which were annexed to the statement of grounds of appeal. The applicant also made reference to its interactive video game Aqua Vita by producing screenshots from the official PlayStation websites in the United Kingdom, Spain and Germany, which showed that that game was available from its online shops, as well as copies of various press articles concerning that game. Also in relation to the game Aqua Vita, the applicant annexed examples of emails exchanged during the online purchase of that game to its statement of grounds of appeal.
43      As will be set out in further detail below, it must be stated that the contested decision, in particular paragraphs 53 to 69 thereof, does not make it possible to determine with sufficient clarity the reasons why the Board of Appeal took the view that the applicant had not, in that way, proven genuine use of the contested mark for the various types of goods in question.
44      In that regard, it should be recalled that, in accordance with the first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94 of Regulation 2017/1001), decisions of EUIPO must state the reasons on which they are based. That duty has the same scope as that laid down by Article 296 TFEU. It is clear from settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review (see judgment of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 73 and the case-law cited).
45      Thus, the statement of reasons for a measure must be logical and, inter alia, contain no internal inconsistency that would prevent a proper understanding of the reasons underlying the measure (judgments of 29 September 2011, Elf Aquitaine v Commission, C‑521/09 P, EU:C:2011:620, paragraph 151, and of 12 December 2012, Electrabel v Commission, T‑332/09, EU:T:2012:672, paragraph 181).
46      In addition, the Board of Appeal is not obliged to respond expressly and exhaustively to all of the arguments put forward by the applicant (see, to that effect, judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 112, and of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 88), on condition, however, that it sets out the facts and legal considerations which have decisive importance in the context of the decision (see judgment of 24 November 2015, Intervog v OHIM (meet me), T‑190/15, not published, EU:T:2015:874, paragraph 48 and the case-law cited).
47      Lastly, it must be borne in mind that a finding that there is a lack or an insufficiency of reasoning constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is a matter of public policy which must be raised by the EU Courts of their own motion (judgment of 2 April 1998, Commission v Sytraval and Brink’s France, C‑367/95 P, EU:C:1998:154, paragraph 67).
48      However, in fulfilling its duty to raise of its own motion a ground of public policy, the EU Courts must have regard to the rule that the parties should be heard (judgments of 2 December 2009, Commission v Ireland and Others, C‑89/08 P, EU:C:2009:742, paragraph 57, and of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 54).
49      In that regard, it should be noted that, in the present case, the Court requested EUIPO, in written questions adopted by way of measures of organisation of procedure, to explain in particular the scope of the expression ‘data carriers’ in paragraphs 53, 56 and 58 of the contested decision and the definition of the concept of ‘data carriers containing programs’ in paragraph 59 of that decision. EUIPO did not provide a satisfactory response to those questions. Furthermore, at the hearing, the issue of the reasoning of the part of the contested decision dealing with the use of the contested mark in relation to the goods in question was discussed at length.
50      In the present case, in the first place, as regards ‘data carriers containing programs’, it must be stated that, in the contested decision, the Board of Appeal set out to the requisite legal standard the reasons why it took the view that the promotional and advertising material and the press articles relating to the PlayStation Vita console, as well as the statement of 4 May 2012 which refers to that evidence, were not capable of proving genuine use of the contested mark for that type of goods. In that regard, it is necessary to bear in mind, in particular, the finding of the Board of Appeal in paragraph 59 of the contested decision that, while it is true that ‘data carriers containing programs’ are devices the function of which is to store data and that games consoles have such a function, in particular to save games, that is not, however, the principal function of those consoles.
51      By contrast, in the contested decision, the Board of Appeal does not in any way explain why the reproductions of memory cards bearing the sign PSVita produced by the applicant are not capable of establishing genuine use of the contested mark for ‘data carriers containing programs’, even though, first, as follows from a combined reading of paragraphs 43 and 44 of the contested decision, it expressly lists those reproductions among the evidence relating to the relevant period and, second, in paragraph 59 of the contested decision, it also expressly refers to memory cards as an example of such data carriers, indeed as its first example. At the hearing, EUIPO confirmed that memory cards came within the definition of ‘data carriers containing programs’.
52      At the hearing, EUIPO contended that the reproductions of memory cards could not be accepted on the basis that they did not come within the relevant period. That assertion cannot be accepted, given that, as is clear from paragraph 51 above, it directly contradicts the findings contained in paragraph 43 and 44 of the contested decision. The fact, which was also put forward by EUIPO at the hearing, that the latter two paragraphs could have been drafted more clearly, cannot constitute a valid justification but, on the contrary, confirms that the contested decision contains deficiencies in its reasoning.
53      In the second place, it must be stated that, in the contested decision, the Board of Appeal does not state in a sufficiently clear and unequivocal manner the reasons why it found that genuine use of the contested mark had not been established for ‘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’. Accordingly, the relevant part of the contested decision contains a mere reference to that category of goods. Although that same part of the contested decision refers to the expression ‘data carrier’ several times, it cannot, however, be established with certainty whether, as EUIPO argued in its reply to one of the Court’s written questions and reiterated at the hearing, that expression covers both ‘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’ and ‘data carriers containing programs’, or whether it covers only the latter category of goods. The use, in paragraph 58 of the contested decision, of the words ‘in particular’ after the reference to the ‘listed goods’ (see paragraph 23 above), as well as the mention and definition in paragraph 59 of the contested decision of only ‘data carriers containing programs’, suggests rather that, by that expression, the Board of Appeal in fact contemplated only the latter category of goods.
54      In the third place, as regards ‘computer software’, it must be stated that, in the contested decision, the Board of Appeal set out to the requisite legal standard the reasons why it took the view that the applicant’s evidence relating to the video game Aqua Vita did not make it possible to establish genuine use of the contested mark for that category of goods. This shows clearly that the Board of Appeal essentially took the view that that evidence was insufficient to show the extent of that use.
55      By contrast, in the contested decision, the Board of Appeal does not explain why it did not consider it necessary to accept the applicant’s evidence establishing the presence of the sign PSVita on the video games to be played on the PlayStation Vita console.
56      In its response and at the hearing, EUIPO argued in this connection, with more specific regard to the photographs of video game boxes bearing the sign PSVita annexed to the statement of grounds of appeal, that those photographs did not contain information relating to the place, time, extent and exact nature of the use.
57      In that regard, it should be recalled that the statement of reasons for a decision must appear in the actual body of that decision and may not be made by means of subsequent explanations provided by EUIPO, save in exceptional circumstances which, in the absence of any urgency, are not present (see, to that effect, judgments of 20 May 2009, VIP Car Solutions v Parliament, T‑89/07, EU:T:2009:163, paragraph 76 and the case-law cited, and of 14 January 2015, Veloss International and Attimedia v Parliament, T‑667/11, not published, EU:T:2015:5, paragraph 63). It follows that the decision must, in principle, be self-sufficient and that the reasons on which it is based cannot be stated in written or oral explanations given subsequently when the decision in question is already the subject of proceedings brought before the EU Courts (see, to that effect and by analogy, judgments of 15 June 2005, Corsica Ferries France v Commission, T‑349/03, EU:T:2005:221, paragraph 287, and of 18 December 2008, Componenta v Commission, T‑455/05, not published, EU:T:2008:597, paragraph 121).
58      In the present case, as there is no urgency, the exceptional circumstances referred to in paragraph 57 above are not present and EUIPO’s explanations cannot be regarded as supplementing a statement of reasons which is already self-sufficient, inasmuch as those explanations constitute an entirely new statement of reasons.
59      It follows from all of the foregoing considerations that the Board of Appeal infringed its obligation to state reasons with respect to the elements of reasoning which are essential to support its final conclusion, with the result that the contested decision must be annulled, without it being necessary to examine the pleas relied on by the applicant.
Costs
60      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 EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
61      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 November 2015 (Case R 2232/2014-5), relating to revocation proceedings between Vieta Audio, SA and Sony Computer Entertainment Europe Ltd;
2.      Orders EUIPO to bear its own costs and to pay those incurred by Sony Computer Entertainment Europe;
3.      Orders Vieta Audio to bear its own costs.
Collins
Kancheva
Barents
Delivered in open court in Luxembourg on 12 December 2017.
E. Coulon
S. Frimodt Nielsen
Registrar
President
* Language of the case: English.