As a trade mark owner, it is important that you make genuine use of your mark in the first 5 years after completing the registration procedure. A trade mark can be revoked if you do not make genuine use of it for the goods or services for which it is registered, and there are no proper reasons for not using the mark. Equally, if use has been suspended for an uninterrupted period of 5 years and there are no proper reasons for non-use the mark can be revoked.
Any person can apply to have a trade mark revoked, including non-competitors, so making genuine use of your trade mark in the first 5 years is vital.
The recent revocation of Sony’s Vita trade mark provides a useful example of not only using your trade mark genuinely but using the mark in the correct class of goods and services.
In September 2005, Sony registered “Vita” as a European Trade Mark (EUTM) under a variety of class 9 items, which included “data carriers containing programs” and “audio and/or image carriers (not of paper).” In October 2011, Vieta Audio applied for revocation for non-use for the period of 5 years from October 2006 to October 2011. Sony argued that there was proof of use, pointing to the handheld gaming console PlayStation Vita (PS Vita).
Both the Cancellation Division and Board of Appeal (BoA) rejected Sony’s Argument. The case reached The General Court, where the focus was on the Vita mark’s genuine use as a “data carriers containing programs” and “audio and/or image carriers”. However, Sony’s PS Vita was primarily marketed to those looking for a portable gaming device and the gaming experience in general – evidenced by one of their brochures which described it as “a powerful next generation gaming system”. The “data carrier carrying programs” and “audio and/or image carrier” were secondary components which supplemented its main use – gaming.
The General Court also added that the genuine use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user. Additionally, when assessing whether the use of a trade mark is genuine, regard must be had to whether the commercial use of the mark is real. Sony’s real ‘commercial use’ use of the Vita mark related to its portable games console, the PS Vita, and not the underlying software – which was what the mark was registered for. Therefore, the Vita mark lacked genuine use in class 9 and was revoked.
Despite the fact decisions of the EU courts no longer bind the courts in England & Wales from 1st January 2021, this decision is still persuasive if a similar situation arises.
This case serves as a reminder that when registering a trade mark, careful consideration is paid to the class of goods and services you intend to use your mark in, but also that the mark is used commercially. In the case of a portable games console such as the PS Vita, the Vita mark should be registered in a class including portable gaming devices, as opposed to a class which involves the underlying software i.e., data carriers and audio/image carriers. Ultimately, the key is to assess the goods and services your mark relates to and making genuine use of the mark in that market.
Written by Saad Khan, Paralegal
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