Source: EURLEX
Language: en
Format: md

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

19 December 2019 (
[\*1](#t-ECR_62018TJ0690_EN_01-E0001)
)

(EU trade mark — Revocation proceedings — EU word mark Vita — Decision taken following the annulment by the General Court of an earlier decision — Article 65(6) of Regulation (EC) No 207/2009 (now Article 72(6) of Regulation (EU) 2017/1001 — Res judicata)

In Case T‑690/18,

Sony Interactive Entertainment Europe Ltd, established in London (United Kingdom), represented by S. Malynicz QC,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and H. O’Neill, 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 Fourth Board of Appeal of EUIPO of 10 September 2018 (Case R 695/2018-4), relating to revocation proceedings between Vieta Audio and Sony Interactive Entertainment Europe,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins (Rapporteur), President, M. Kancheva and G. De Baere, Judges,

Registrar: R. Ūkelytė, Administrator,

having regard to the application lodged at the Court Registry on 22 November 2018,

having regard to the response lodged at the Court Registry on 12 April 2019,

further to the hearing on 10 October 2019,

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](./../../../legal-content/EN/AUTO/?uri=OJ:L:1994:011:TOC)), 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](./../../../legal-content/EN/AUTO/?uri=OJ:L:2009:078:TOC)), 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](./../../../legal-content/EN/AUTO/?uri=OJ:L:2017:154:TOC))). |

| 2 | Registration as a mark was sought for the word sign Vita. |

| 3 | The goods in respect of which registration was sought are, inter alia, in Class 9 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, 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 application for the trade mark 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 of 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 EU word mark Vita in so far as those rights covered the goods mentioned in paragraph 3 above. Forrester Ketley is a services company which represented, among others, Sony Computer Entertainment Europe Ltd, predecessor in title of the applicant, Sony Interactive Entertainment Europe Ltd, with respect to trade mark rights before EUIPO. |

| 7 | The EU word mark Vita, as it resulted from this partial assignment, was registered under No 9993361. |

| 8 | By fax of 28 September 2011, Forrester Ketley informed EUIPO that it had transferred the contested mark to Sony Computer Entertainment Europe on 15 September 2011. |

| 9 | On 14 October 2011, the other party to the proceedings before EUIPO, Vieta Audio, SA, filed an application for revocation of the contested mark in respect of all of the goods which it covered, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001). In that application, it argued that the contested mark had not been put to genuine use in the European Union within the relevant period of five years, 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, Sony Computer Entertainment Europe 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 explained that it had used that mark for its handheld gaming console, named the PlayStation Vita, as well as for games and accessories relating to it. It also stated that the name of that new console had been officially announced in June 2011 and had thereafter 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 taken place 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, Sony Computer Entertainment Europe 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, 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; |  | – | 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 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. | |

| 12 | On 2 January 2013, Sony Computer Entertainment Europe responded to observations submitted by the other party to the proceedings before EUIPO 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 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, 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. |

| 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, Sony Computer Entertainment Europe 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, 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 boxes on which appeared, in addition to the name of the video game concerned, the sign PSVita (which is a short form of PlayStation Vita). |

| 17 | By decision of 12 November 2015 (Case R 2232/2014-5) (‘the earlier decision’), the Fifth Board of Appeal of EUIPO upheld the decision of the Cancellation Division and dismissed the appeal. |

| 18 | In the first place, the Fifth Board of Appeal, after recalling the applicable principles (paragraphs 19 to 24 of the earlier 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, it stated that the relevant period extended from 14 October 2006 to 13 October 2011. Secondly, 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 the promotional material had been distributed to participants at the Gamescom conference. |

| 19 | In the second place, the Fifth Board of Appeal examined the issue of the place of use (paragraphs 39 to 42 of the earlier decision). In particular, 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 Fifth Board of Appeal examined the issue of the nature and extent of use (paragraphs 43 to 52 of the earlier decision). After pointing out that the majority of the evidence submitted by Sony Computer Entertainment relating to the relevant period consisted of promotional and advertising materials, it considered the extent to which use of a mark in advertising could constitute genuine use. In that connection, it stated, inter alia, that advertising in advance of the actual sale of goods or services was generally considered to constitute genuine use if its purpose was to establish a market for the good or services. It found that, in the case in point, ‘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 earlier decision). The Board of Appeal then concluded that ‘the fact that the evidence of use filed by [Sony Computer Entertainment Europe showed] advertising and preparatory acts for putting the new console on the market [complied] with the requirements of genuine use’ (paragraph 50 of the earlier decision). Lastly, the Board of Appeal found, in paragraph 52 of the earlier decision, that it was clear from the evidence produced by Sony Computer Entertainment Europe 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 gaming console for which specific games had been developed. |

| 21 | In the fourth place, the Fifth 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 earlier decision). |

| 22 | In that connection, first of all, the Fifth Board of Appeal stated that the seventh edition of the Nice Classification was in force at the time of the filing of the original mark in 2001 and that, accordingly, that was the edition to be taken into account. According to the Board of Appeal, at that time ‘gaming 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 were therefore not categorised as ‘data carriers’ in Class 9 or ‘computer software’ (paragraph 53 of the earlier 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 in respect of which the contested mark had been registered (paragraph 54 of the earlier decision). |

| 23 | Next, the Fifth Board of Appeal found that Sony Computer Entertainment Europe had provided evidence showing that the purpose of the advertising campaigns which preceded the launch of the new PlayStation Vita console had been to create awareness of that console and of the new games to be played on it, but that no reference had been made to ‘data carriers’ or to ‘computer software’ (paragraphs 55 and 56 of the earlier 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 earlier 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 earlier decision). |

| 24 | The Fifth Board of Appeal concluded from the foregoing that the Cancellation Division had acted correctly in finding that all of the evidence filed by Sony Computer Entertainment Europe, and the statement of 4 May 2012 from one of its directors, showed use in respect of goods in Class 28 and not for the goods covered by the contested mark (paragraph 60 of the earlier decision). |

| 25 | With regard to the video game Aqua Vita, the Fifth Board of Appeal observed, inter alia, that (i) the sales figures submitted by Sony Computer Entertainment Europe were uncorroborated by invoices or other evidence, (ii) 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 (iii) the fact that that game was available on the EU market from online shops was not sufficient to establish use of the contested mark (paragraphs 66 and 68 of the earlier decision). |

| 26 | On 21 January 2016, Sony Computer Entertainment Europe brought an action before the Court against the earlier decision, registered as Case T‑35/16, relying on a single plea in law alleging infringement of Article 51(1)(a) of Regulation No 207/2009. |

| 27 | By judgment of 12 December 2017, Sony Computer Entertainment Europe v EUIPO — Vieta Audio (Vita) ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), the Court annulled the earlier decision in its entirety, on the basis of a public policy issue raised ex officio, namely the inadequate statement of reasons. In particular, in paragraph 43 of that judgment, the Court held that the earlier decision did not make it possible to determine with sufficient clarity the reasons why the Fifth Board of Appeal had taken the view that Sony Computer Entertainment Europe had not proved genuine use of the contested mark for the various types of goods in question. |

| 28 | Further to the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), the Presidium of the Boards of Appeal referred the case to the Fourth Board of Appeal, under reference R 695/2018-4. |

| 29 | By decision of 10 September 2018 (‘the contested decision’), 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), the Court had upheld certain findings of the Fifth Board of Appeal. |

| 30 | In the first place, the Fourth Board of Appeal found, in paragraph 25 of the contested decision, that the Court, in the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), had upheld the earlier decision in so far as concerns the findings of the Fifth Board of Appeal on the time, place and nature of use. |

| 31 | In the second place, as regards ‘data carriers containing programs’, the Fourth Board of Appeal found, in paragraph 41 of the contested decision, that, by the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), the Court had upheld and made final the findings of the Fifth Board of Appeal, in paragraphs 59 and 60 of the earlier decision, as to the reasons why the evidence relating to the PlayStation Vita console did not prove genuine use of the contested mark in respect of those goods. |

| 32 | In the third place, as regards the ‘audio and/or image carriers (not paper)’, the Fourth Board of Appeal found, in paragraphs 55 and 56 of the contested decision, that memory cards are also covered by that definition, but that the evidence produced was also not capable of proving genuine use for those goods. For the sake of completeness, it added, in paragraph 57 of the contested decision, that, in so far as the applicant maintained that the PlayStation Vita console also belonged to that category of goods, the reasoning set out in paragraph 59 of the earlier decision concerning ‘data carriers containing programs’ could be applied by analogy, bearing in mind that the principal function of those consoles is not to store audio and image files. According to the Fourth Board of Appeal, that reasoning had been upheld by the Court in paragraph 50 of the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)). |

| 33 | In the fourth place, as regards the evidence relating to the video game Aqua Vita, the Fourth Board of Appeal found, in paragraph 59 of the contested decision, that, in paragraph 54 of the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), the Court had found that the Fifth Board of Appeal had set out to the requisite legal standard, in paragraphs 61 to 69 of the earlier decision, the reasons why it had considered that the evidence relating to the video game Aqua Vita did not make it possible to establish genuine use of the contested mark. |

Forms of order sought

| 34 | The applicant claims that the Court should:   | – | annul the contested decision; |  | – | order EUIPO to pay the costs. | |

| 35 | EUIPO contends that the Court should:   | – | dismiss the application; |  | – | order the applicant to pay the costs. | |

Law

| 36 | In support of its application, the applicant relies 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 duty to state reasons and (ii) infringement of Article 51(1)(a) of Regulation No 207/2009. |

| 37 | According to the applicant, the Fourth Board of Appeal infringed Article 65(6) of Regulation No 207/2009 in that it failed to take the necessary measures to comply with the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)). In proceeding in that way, it failed in its obligation to state reasons. |

| 38 | The applicant claims that the Fourth Board of Appeal wrongly found, in paragraphs 41, 57 and 59 of the contested decision, that the Court had upheld certain findings of the Fifth Board of Appeal. The applicant takes the view that the Court, in its judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), concluded only that the earlier decision was vitiated by a failure to state reasons and that it had, accordingly, to be annulled in its entirety. By contrast, the Court did not examine the pleas in law raised before it by Sony Computer Entertainment Europe and, consequently, it did not confirm the correctness of the reasoning relating to any of the arguments advanced by the parties. |

| 39 | It is claimed that as a result, the Fourth Board of Appeal wrongly omitted to examine the applicant’s arguments as to whether the evidence that it had submitted concerning the PlayStation Vita console was capable of demonstrating genuine use of the contested mark in respect of the category of ‘data carriers containing programs’ or that of ‘audio and/or image carriers (not paper)’. |

| 40 | As regards the category of ‘audio and/or image carriers (not paper)’, the applicant claims that the Fourth Board of Appeal wrongly found that the Court had upheld the finding that the PlayStation Vita console belonged to that category of goods only if its principal function was to store audio and image files. The applicant takes the view that the Court had confined itself to affirming that, in that regard, the earlier decision had set out to the requisite legal standard the reasons allowing that decision to be understood. |

| 41 | As regards ‘computer software’, the applicant observes that the Fourth Board of Appeal wrongly found that the Court had upheld the earlier decision as to the evaluation of the evidence relating to the video game Aqua Vita. According to the applicant, the Court recalled only that the reasoning of the Fifth Board of Appeal in that connection was sufficiently clear. |

| 42 | EUIPO contends that the Court annulled the earlier decision on the ground that the Fifth Board of Appeal had breached its obligation to state reasons as regards aspects of the reasoning that were essential to supporting the overall conclusion in the earlier decision. The aspects of the reasoning identified by the Court as being vitiated by a failure to state reasons do not include those which related to the use of the PlayStation Vita as a ‘data carrier containing programs’ and as an ‘audio and/or image carrier’. As the Fourth Board of Appeal found in paragraphs 41 and 59 of the contested decision (see paragraph 31 above), the findings of the Fifth Board of Appeal had therefore become final in that connection. As regards the finding in paragraph 57 of the contested decision (see paragraph 32 above), EUIPO adds that it is a reasoning ‘for the sake of completeness’, which it endorses. |

| 43 | In the alternative, EUIPO claims that, if the Court were to hold that the findings of the Fifth Board of Appeal had not become final, the contested decision would still not be vitiated by a failure to state reasons, because it is clear that the position of the Fourth Board of Appeal on the points at issue is identical to that adopted by the Fifth Board of Appeal on the same points in the earlier decision. |

| 44 | First of all, it should be observed that since no appeal has been brought against the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), it has become final. |

| 45 | Secondly, it should be recalled that, according to the case-law, a judgment annulling a measure takes effect ex tunc and thus has the effect of retroactively eliminating the annulled measure from the legal system (see judgment of 25 March 2009, Kaul v OHIM — Bayer (ARCOL), [T‑402/07](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2009%3A85&locale=en), [EU:T:2009:85](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2009%3A85&lang=EN&format=pdf&target=CourtTab), paragraph [21](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2009%3A85&lang=EN&format=html&target=CourtTab&anchor=#point21) and the case-law cited). According to the same line of authority, in order to comply with a judgment annulling a measure and to implement it fully, the institution responsible for adopting that annulled measure is required to have regard not only to the operative part of the judgment but also to the grounds constituting its essential basis, in so far as they are necessary for the purposes of determining the exact meaning of what is stated in the operative part. It is those grounds which, on the one hand, identify the precise provision held to be illegal and, on the other, indicate the specific reasons which underlie the finding of illegality contained in the operative part and which the institution concerned must take into account when replacing the annulled measure (judgments of 25 March 2009, ARCOL, [T‑402/07](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2009%3A85&locale=en), [EU:T:2009:85](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2009%3A85&lang=EN&format=pdf&target=CourtTab), paragraph [22](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2009%3A85&lang=EN&format=html&target=CourtTab&anchor=#point22), and of 13 April 2011, Safariland v OHIM — DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), [T‑262/09](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2011%3A171&locale=en), [EU:T:2011:171](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2011%3A171&lang=EN&format=pdf&target=CourtTab), paragraph [41](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2011%3A171&lang=EN&format=html&target=CourtTab&anchor=#point41)). |

| 46 | It should also be observed that, by the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab), paragraphs [43](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=html&target=CourtTab&anchor=#point43) to [59](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=html&target=CourtTab&anchor=#point59) and the case-law cited), the Court annulled the earlier decision on the basis of a public policy issue raised ex officio, namely the inadequate statement of reasons. |

| 47 | In that connection, it should be borne in mind, first, that pursuant to the first sentence of Article 75 of Regulation No 207/2009 (now the first sentence of Article 94(1) of Regulation 2017/1001), decisions of EUIPO must state the reasons on which they are based. The obligation to state reasons, thus laid down, has the same scope as that enshrined in Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal fashion 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 European Union court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, [C‑447/02 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2004%3A649&locale=en), [EU:C:2004:649](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2004%3A649&lang=EN&format=pdf&target=CourtTab), paragraphs [63](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2004%3A649&lang=EN&format=html&target=CourtTab&anchor=#point63) to [65](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2004%3A649&lang=EN&format=html&target=CourtTab&anchor=#point65)). |

| 48 | It must also be observed, secondly, that the obligation to state reasons constitutes an essential procedural requirement which must be distinguished from the question of the merits of those reasons, which concern the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 22 September 2016, Pensa Pharma v EUIPO, [C‑442/15 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2016%3A720&locale=en), not published, [EU:C:2016:720](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2016%3A720&lang=EN&format=pdf&target=CourtTab), paragraph [35](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2016%3A720&lang=EN&format=html&target=CourtTab&anchor=#point35) and the case-law cited). |

| 49 | The failure to state reasons found by the Court in the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), concerned three aspects of the earlier decision. In the first place, the Fifth Board of Appeal had not explained why the reproductions of memory cards bearing the sign PSVita produced by the applicant were not capable of establishing genuine use of the contested mark for ‘data carriers containing programs’ (judgment of 12 December 2017, Vita, [T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab), paragraph [51](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=html&target=CourtTab&anchor=#point51)). In the second place, it had not stated in a sufficiently clear and unequivocal manner the reasons why it had 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’ (judgment of 12 December 2017, Vita, [T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab), paragraph [53](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=html&target=CourtTab&anchor=#point53)). In the third place, it had not explained why it had not accepted the applicant’s evidence establishing the presence of the sign PSVita on the video games to be played on the PlayStation Vita console (judgment of 12 December 2017, Vita, [T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab), paragraph [55](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=html&target=CourtTab&anchor=#point55)). |

| 50 | In its examination of that public policy issue, the Court also noted that the Fifth Board of Appeal had set out to the requisite legal standard the reasons why it had taken the view that the promotional and advertising material and the press articles relating to the PlayStation Vita console were not capable of proving genuine use of the contested mark for ‘data carriers containing programs’ (judgment of 12 December 2017, Vita, [T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab), paragraph [50](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=html&target=CourtTab&anchor=#point50)). The same applied to the reasons why the Fifth Board of Appeal had found that the evidence relating to the video game Aqua Vita did not make it possible to establish genuine use of the contested mark for ‘computer software’ (judgment of 12 December 2017, Vita, [T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab), paragraph [54](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=html&target=CourtTab&anchor=#point54)). |

| 51 | It should be observed that, in paragraphs 50 and 54 of the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), the Court found only that the Fifth Board of Appeal had, to the requisite legal standard, stated the reasons forming the basis of the earlier decision. However, it is clear from that judgment that the Court did not examine the arguments put forward by Sony Computer Entertainment Europe in the context of its single plea in law, alleging that the Fifth Board of Appeal had infringed Article 51(1)(a) of Regulation No 207/2009 and that, consequently, the Court did not rule on the substantive legality of the earlier decision. It follows that the force of res judicata concerns only the statement of reasons as an essential procedural requirement, and not its substantive legality. |

| 52 | Moreover, it should be observed that the force of res judicata extends only to the grounds of a judgment which constitute the necessary support of its operative part and are, therefore, inseparable from it (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, [C‑84/17 P, C‑85/17 P and C‑95/17 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2018%3A596&locale=en), [EU:C:2018:596](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2018%3A596&lang=EN&format=pdf&target=CourtTab), paragraph [52](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2018%3A596&lang=EN&format=html&target=CourtTab&anchor=#point52) and the case-law cited). Consequently, the aspects of the earlier decision which the Court had observed were well reasoned cannot be considered as having acquired the force of res judicata (see, to that effect and by analogy, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, [C‑84/17 P, C‑85/17 P and C‑95/17 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2018%3A596&locale=en), [EU:C:2018:596](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2018%3A596&lang=EN&format=pdf&target=CourtTab), paragraph [53](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AC%3A2018%3A596&lang=EN&format=html&target=CourtTab&anchor=#point53)). Thus, in the present case, the Fourth Board of Appeal could neither be bound by those aspects of the earlier decision nor uphold them in the contested decision. |

| 53 | The Fourth Board of Appeal therefore wrongly held, in paragraphs 41 and 59 of the contested decision, that the findings of the Fifth Board of Appeal concerning the PlayStation Vita and the video game Aqua Vita had become final as a consequence of the judgment of 12 December 2017, Vita ([T‑35/16](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), not published, [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), and, in paragraph 57 of the contested decision, that the Court had upheld the finding of the Fifth Board of Appeal that the PlayStation Vita console did not belong to the category of ‘audio and/or image carriers (not of paper)’ because its principal function was not the storage of audio and image files. |

| 54 | Further to the annulment of the earlier decision for failure to state reasons, and in order 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2017%3A886&locale=en), [EU:T:2017:886](./../../../legal-content/redirect/?urn=ecli:ECLI%3AEU%3AT%3A2017%3A886&lang=EN&format=pdf&target=CourtTab)), the Fourth Board of Appeal was therefore required to hand down a fresh decision on all the relevant issues for the application of Article 51(1)(a) of Regulation No 207/2009. |

| 55 | Lastly, it is clear from the foregoing that the argument, raised by EUIPO in the alternative, that the contested decision is not vitiated by a failure to state reasons because it is evident that the position of the Fourth Board of Appeal on the points at issue is identical to that adopted by the Fifth Board of Appeal on those same points in the earlier decision, cannot succeed. It is in fact not apparent from the contested decision (see paragraphs 29 to 33 above) that the position of the Fourth Board of Appeal on the points at issue is identical to that adopted by the Fifth Board of Appeal on those same points in the earlier decision. In the contested decision, the Fourth Board of Appeal wrongly found that the Court had upheld certain findings of the Fifth Board of Appeal. It consequently considered itself bound by those findings, without examining or adopting a position on the relevant arguments submitted by the parties. Moreover, as already observed in paragraph 52 above, the Fourth Board of Appeal could neither be bound by the findings of the Fifth Board of Appeal nor uphold them in the contested decision. |

| 56 | Since the Fourth Board of Appeal has failed to fulfil the obligation to hand down a fresh decision on all the relevant issues, the first plea in law must be upheld in that respect and the contested decision annulled in its entirety, without there being any need to rule on the other complaints and plea in law. |

Costs

| 57 | 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. |

|  | On those grounds,  THE GENERAL COURT (Eighth Chamber)  hereby: |

|  | | 1. | Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 September 2018 (Case R 695/2018-4), relating to revocation proceedings between Vieta Audio, SA and Sony Interactive Entertainment Europe Ltd; | |

|  | | 2. | Orders EUIPO to bear its own costs and to pay those incurred by Sony Interactive Entertainment Europe. | |

|  |  |
| --- | --- |
|  | Collins  Kancheva  De Baere  Delivered in open court in Luxembourg on 19 December 2019.  E. Coulon  Registrar  R. da Silva Passos  President |

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[\*1](#c-ECR_62018TJ0690_EN_01-E0001)
) Language of the case: English.

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