Case T‑690/18, Sony Interactive Entertainment Europe Ltd, v EUIPO; Case T-690/18. Decision of the General Court given on 19 December 2019.
On 19 December 2019 the General Court found in favour of Sony Interactive Entertainment Europe Ltd’s (“the Applicant’s”) appeal from a decision of the Fourth Board of Appeal in Case R 695/2018-4. The General Court held that the Fourth Board of Appeal had incorrectly upheld the Fifth Board of Appeal’s decision in Case R 2232/2014-5 as it had failed to comply with Article 65(6) of Regulation 207/2009 which in this case meant that it was not entitled to rely on findings in the earlier decision but was rather required to deliver a fresh judgment on all issues.
On 27 September 2005 the word VITA was registered as an EUTM inter alia, in class 9. On 14 October 2011, Vieta Audio SA applied to revoke the mark on the basis that it had not been put to genuine use. In 2014 the Cancellation Division subsequently revoked the contested mark and the Applicant appealed. In 2015, the Fifth Board of Appeal upheld the Cancellation Division’s decision in Case R 2232/2014-5 (“the earlier decision”).
On 12 December 2017, in Sony Computer Entertainment Europe v EUIPO — Vieta Audio (Vita) (T‑35/16, not published, EU:T:2017:886), the General Court annulled the earlier decision in its entirety because the Fifth Board of Appeal had failed to provide a sufficient statement of reasons for its decision that Sony Computer Entertainment Europe had not proved genuine use for the various types of goods in question and as a result upheld the cancellation.
Subsequently the case was referred to the Fourth Board of Appeal as reference R 695/2018-4 (“contested decision”). The Fourth Board of Appeal examined and reassessed whether the evidence provided by Sony made it possible to establish genuine use of the contested mark. However, it ultimately dismissed the appeal on the basis that the General Court had upheld certain findings of the Fifth Board of Appeal.
The Applicant sought to have the contested decision annulled and relied upon Article 65(6) of Regulation 207/2009 (now Article 72(6) of Regulation 2017/1001). It submitted that the General Court had annulled the earlier decision for failure to provide an adequate statement of reasons and as a consequence it claimed that the Fourth Board of Appeal had incorrectly held that certain of the earlier court’s/board’s findings were res judicata in circumstances that it was not legally bound by those findings and that therefore it should have handed down a fresh decision on all the relevant issues and had accordingly failed to take the necessary measures to comply with the General Court’s decision in Case T-35/16.
In response, the EUIPO submitted that the General Court had found that the Fifth Board of Appeal had breached its obligations by not providing reasoning to support its conclusion in the earlier decision however, the court had not condemned all its findings and these particular findings had become final.
Decision of the General Court
At the outset, the General Court held that the decision in case T-35/16 was final as no appeal had been lodged against this decision.
Referring to Kaul v OHIM — Bayer (ARCOL), T‑402/07, the General Court noted that that an annulled judgment takes effect retroactively. Moreover, the institution responsible for implementing the annulled measure must where necessary, have regard to the operative part of the decision and the reasons for that decision.
Referring to Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, the Court noted that the force of res judicata only applies to the parts of a judgment which are necessary to support its operative part and which cannot be separated from it. Consequently, it found that parts of the earlier decision even though considered to be well-reasoned did not have the force of res judicata.
The General Court held that the Fourth Board of Appeal had failed to comply with Article 65(6) of Regulation 207/2009. In order to comply with judgment T-35/16, the Fourth Board of Appeal was obliged to provide a fresh judgment on all relevant issues. As a result, the General Court held that the contested decision had to be annulled.
This article first appeared on WTR Daily, Part of the World Trademark Review in January 2020. For further information please go to www.worldtrademarkreview.com