This article has been written by Jeetu Kanwar, pursuing Diploma in Intellectual Property, Media and Entertainment Laws and has been edited by Oishika Banerji (Team Lawsikho).
It has been published by Rachit Garg.
Table of Contents
Introduction
A trademark is an intellectual property that is capable of distinguishing goods or services belonging to one enterprise from those of other enterprises. The essence of a trademark is distinctiveness in terms of the protection it has to offer. A trademark is considered to be one of the valuable assets for any organisation whether it is a small enterprise or a multinational company as it helps a company in its growth and development. A lot of revenue is generated by a company through the use of the respective trademarks. It is necessary to register a trademark in order to prevent others from using the same. Further, registration helps in filing suit for infringement if there arise disputes between two trademarks that appear to be deceptively similar to each other. In relation to the trademark, the event on 1 September 2021 has attracted our present discussion. Sony’s ‘Vita’ trademark lost out in genuine use revocation proceedings in the European Union General Court on this date. The trademark Vita was registered by Sony for a variety of items under Class 9 that included data carriers containing programs and“audio and/or image carriers (not of paper). Further, ‘Vieta Audio’ had applied for trademark registration in 2011 and also stood revoked on grounds of non-use. Although Sony provided evidence of the usage of the impugned trademark, notably in relation to the PlayStation Vita (a handheld gaming console), the same was rejected by both the Cancellation Division and the Board of Appeal (BoA). This article is a detailed explanation of this instance.
Background of the ‘Vita’ trademark of Sony
Walking on the same line as other competitive players in the gaming industry, Sony launched its own PlayStation line of home consoles thereby becoming the bestseller in the same. The company went further to first introduce the PlayStation Portable in the mid-2000s. With technological advancement, Sony eventually went ahead to release the PSP’s successor, the ‘PlayStation Vita’. Owing to severe market competition and weighing on high prices for selling its product, Sony had to, unfortunately, discontinue ‘Vita’. Alongside the same, the lack of movement in relation to ‘Vita’ had also caused Sony to lose out on its trademark due to the ‘non-use’ of the same. Thus it is pertinent to note that the ‘Vita’ trademark which was initially named for Sony, now stands partially revoked due to non-use. The issue in the present case revolved around the questions as to whether a portable gaming console could be classified as goods falling under Class 09 that includes ‘data carriers containing programs’ and ‘audio and/or image carriers’. As a consequence of this battle, Sony lost some rights to the ‘PlayStation Vita’s trademark due to lack of use.
The judgement by the General Court/Board of Appeal in the matter of ‘Vita’ trademark of Sony
The Board of Appeal held that PlayStation Vita’s gaming experience was not to be counted to be falling under the category of ‘data carrier or of storage capacity’ as required by the goods of Class 09. This was because the PlayStation Vita, although technically a ‘data carrier carrying programs’ or an ‘audio and/or images carrier’, was not how it was advertised to the consumer (and those features were supplementary to the ‘Vita’ console’s primary function which was gaming). Put simply, the General Court was trying to hold that the perception of the general public concerning the product was of utmost importance with respect to the issue at hand. The General Court had further opined that the genuine use of a trademark is not taken into account by the mere presence of probabilities or suppositions. Rather, major evidence or strong proof needs to be provided. It is important to showcase evidence in order to define the sufficient use of the trademark. It is clear that the genuine use and reputation of a trademark are independent of each other. They both must be dealt with separately. While, the trademark was primarily for the goods particularly specified under Class 09 which were data carrier carrying programs or an audio and/or images carrier, the prospective use of the said trademark was not made in consonance with the Class it was alleged to be falling under.
Analysis of the judgement delivered in Sony’s ‘Vita’ trademark case
The given judgement remains a landmark decision in the history of trademarks. It signifies how much well-known a trademark may be, if it’s not fulfilling a certain criterion then it can be revoked right away. It has no exceptions attached to it. Most importantly it is the customers who are the final decision-makers about the distinctiveness of the trademark for the relevant goods. Furthermore, this case highlights the significance of the usage of a trademark only in relation to the intended class of goods and services it is falling under. It should be taken into consideration that Sonyt’s mark was being used commercially. Such as the ‘PSVita’, and the ‘Vita’ mark should have been registered in a class of goods that includes portable gaming devices, as opposed to a class which involves the underlying software i.e., data carriers and audio/image carriers.
The General Court’s emphasis on the relevance of the product’s intended usage attracts attention as although the PSVita console was technically a ‘data carrier carrying programs’ and an ‘audio and/or image carrier,’ the same was secondary to the product’s primary purpose (a handheld device for mobile entertainment). The fact that trademark use could not be regarded ‘in abstracto’ from the perspective of a hypothetical consumer, instead from the perspective of real individuals in the world of reality, made this decision a landmark one.
Conclusion
This case highlights how famous a trademark is but if it doesn’t match the correct classification it is placed under, then it is liable to be revoked. The judgement lays down a future foundation stone for using the trademarks with a genuine use otherwise it can be revoked right away, as in the case of Sony. As a result, it is important to understand the intricacies of trademark law and its practical implications in the real world. Furthermore, it is the customers who are the final decision-makers in connection to estimating the genuine use of the trademark. Additionally, the PlayStation Vita launched in 2011 was discontinued in 2019. Earlier this year, Sony shut down the console’s digital store, effectively bringing a final end to its lifecycle
References
- https://trademarkblog.kluweriplaw.com/2021/10/18/sonys-vita-mark-revoked-for-non-use/.
- https://www.briffa.com/blog/trade-mark-revocation-how-sony-lost-its-vita-mark-for-non-use/.
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