JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

8 February 2018(*)

(EU trade mark — Revocation proceedings — EU figurative mark Vieta — Genuine use of the trade mark — 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‑879/16,

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 by D. Walicka, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Marpefa, SL, established in Barcelona (Spain),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 October 2016 (Case R 1010/2016-4), relating to revocation proceedings between Sony Computer Entertainment Europe Ltd and Marpefa,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins (Rapporteur), President, M. Kancheva and J. Passer, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 14 December 2016,

having regard to the response lodged at the Court Registry on 28 March 2017,

further to the hearing on 10 November 2017,

gives the following

Judgment

 Background to the dispute

1        On 3 August 2000, Gedelson, SA 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 following figurative sign:

Image not found

3        The goods in respect of which registration was sought are in 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 descriptions: ‘Recording discs, cleaning devices for recording discs, loudspeakers, loudspeaker systems, sound amplifiers, video tapes, magnetic tapes, cabinets for loudspeakers, video cameras, exposed cinematographic films, compact discs, transparencies, photographic apparatus, computers, video screens, apparatus for the reproduction of sound and images, television sets, record players’.

4        The contested mark was registered on 13 September 2001 under number 1790674 for the goods referred to in paragraph 3 above.

5        On 12 December 2002 the transfer of the contested mark to Marpefa, SL, was entered on the register of EUIPO.

6        On 25 July 2010 the registration of the contested mark was renewed until 3 August 2020.

7        On 14 November 2011, the applicant, Sony Interactive Entertainment Europe Ltd, which at that time was called Sony Computer Entertainment Europe Ltd, filed an application for revocation of the contested mark, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), for all the goods for which it had been registered. In that request, the applicant claimed that that mark had not been put to genuine use in the European Union for the relevant period of five years and there were no proper reasons for non-use.

8        On 21 March 2012, in response to the application for revocation of the contested mark, Marpefa stated that the contested mark had been put to genuine use, at least in Spain, between 14 November 2006 and 13 November 2011, for all the goods referred to in paragraph 3 above, and presented various items of evidence containing inter alia the term ‘vieta’ and the following EU figurative mark (also represented in grey):

Image not found

9        By decision of 23 August 2013, the Cancellation Division dismissed the application for revocation in relation to the following goods: ‘loudspeakers, loudspeaker systems, sound amplifiers’ and ‘computers, video screens, apparatus for the reproduction of sound and images, television sets, record players’. It allowed it in respect of the other goods covered by the contested mark.

10      On 28 October 2013, the applicant filed an appeal with EUIPO seeking the annulment of the decision of the Cancellation Division to the extent that it dismissed the application for revocation.

11      By decision of 2 July 2014 (‘the first decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In essence, it found that the evidence adduced by Marpefa showed that the contested mark had been put to genuine use during the relevant period in relation to ‘loudspeakers, loudspeaker systems, sound amplifiers’ and ‘computers, video screens, apparatus for the reproduction of sound and images, television sets, record players’ falling within Class 9.

12      In the first decision, the Board of Appeal first of all indicated that the relevant period for assessing the genuine use of the contested mark extended from 14 November 2006 up to and including 13 November 2011. Secondly, it held that the requirements relating to the place of use were fulfilled in the present case. Thirdly, in relation to the duration of use, it held, in essence, that, taken as a whole, the evidence submitted by Marpefa proved the ‘frequency’ and ‘regularity’ of use of the contested mark in the European Union, in particular between 2008 and 2011. Fourthly, as regards the nature of the use, the Board of Appeal found that the contested mark had not been used in a form which altered its distinctive character compared with the form in which it had been registered. Fifthly, the Board of Appeal took the view that an overall assessment of the evidence showed that the contested mark had been used to designate the goods referred to in paragraph 11 above. In that context, it held in particular, in paragraph 46 of the first decision, that it was clear that those goods were ‘electronic, audio and vision systems, goods and products that either [included] or [formed] part of “apparatus for the reproduction of sounds and images”’, that ‘they all [had] the same or similar nature and purpose and [were] not only complementary but intrinsically connected’, and that ‘they [belonged] to the “natural extension field”’ as defined by the Court in the judgment of 14 July 2005, Reckitt Benckiser (España) v OHIM — Aladin (ALADIN), T‑126/03, EU:T:2005:288. In paragraph 46, the Board further stated that the term ‘apparatus for the reproduction of sounds and images’ was defined sufficiently ‘precisely and narrowly’ to denote the goods for which use had been proved and that there was no valid reason to make any significant subdivisions within that category.

13      By application lodged at the Court Registry on 19 September 2014 and registered under case number T‑690/14, the applicant brought an action for the annulment of the first decision. In support of its action, the applicant relied on three pleas in law. The third plea alleged infringement of the principle of partial use set out in Article 51(2) of Regulation No 207/2009 (now Article 58(2) of Regulation 2017/1001) and was directed against the findings made by the Board of Appeal in paragraph 46 of the first decision. As part of that plea, the applicant submitted, in essence, that the protection afforded by the contested mark for ‘apparatus for the reproduction of sound and images’ applied to a category of goods that is far too broad and should be divided into subcategories. At the oral hearing in the abovementioned case, it added that that category was not defined with sufficient clarity and precision.

14      By judgment of 10 December 2015, Sony Computer Entertainment Europe v OHIM — Marpefa (Vieta) (T‑690/14, not published, EU:T:2015:950), the General Court upheld the third plea on the ground, in essence, that, contrary to what was stated in paragraph 46 of the first decision, it cannot be held that the term ‘apparatus for the reproduction of sound and images’ was defined sufficiently ‘precisely and narrowly’. The General Court noted that, moreover, when requested at the hearing to state what that term covered, EUIPO was not able to give any conclusive answer at all. The Court also held that that term, understood in its natural and usual sense, was likely to include a wide array of audiovisual and electronic equipment, including equipment for which the Cancellation Division had considered that proof of genuine use had not been adduced. Consequently, in paragraph 69 of the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), the Court stated that it was necessary to annul the [first] decision ‘in so far as it found that genuine use of the contested mark had been proven for “apparatus for the reproduction of sound and images” and, accordingly, that it dismissed the appeal against the decision of the Cancellation Division to reject the application for revocation of the contested mark for such apparatus’.

15      Points 1 and 2 of the operative part of the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), are worded as follows:

‘[The General Court]

1.       Annuls the [first] decision ... in so far as it dismissed the appeal against the decision of the Cancellation Division to reject the application for the revocation of the [contested] ... mark … for “apparatus for the reproduction of sound and images”;

2.      Dismisses the action as to the remainder.’

16      Following the judgment of 10 December 2015, Vieta, T‑690/14, not published, EU:T:2015:950), the Presidium of the Boards of Appeal of EUIPO, by decision of 6 June 2016, referred the case to the Fourth Board of Appeal under reference number R 1010/2016-4.

17      By decision of 4 October 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal in Case R 1010/2016-4.

18      In the contested decision, the Board of Appeal first of all stated that, following the partial annulment of the first decision by the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), it had to examine whether the contested trade mark had been put to genuine use for ‘apparatus for the reproduction of sound and images’ during the relevant period (paragraph 13 of the contested decision). It stated that the first decision was definitive in relation to ‘loudspeakers, loudspeaker systems, sound amplifiers, computers, video screens, television sets [and] record players’ and that, accordingly, genuine use of the contested mark for those goods had been proven (paragraph 14 of the contested decision).

19      The Board of Appeal then stated that the term ‘apparatus for the reproduction of sound and images’ was any machine capable of reproducing both sound and images (paragraph 15 of the contested decision). It took the view that a television set was synonymous with a specific device for reproducing sound and images and that, for that reason, the action brought before it by the applicant should be rejected (paragraph 17 of the contested decision). It added that the term ‘apparatus for the reproduction of sound and images’ was ‘a specific term, and a synonym of “television sets”, sufficiently clear and precise’, and that it was not part of the heading of Class 9 (paragraph 18 of the contested decision).

20      Lastly, the Board of Appeal stated that the principle laid down in the case-law, as stated in paragraph 61 of the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), according to which, in the case of a trade mark registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of subcategories capable of being viewed independently, proof that the mark has been put to genuine use in relation to part of those goods or services affords protection only for the subcategory or subcategories to which the goods or services for which the trade mark has actually been used belong, was no longer relevant to the present case (paragraph 19 of the contested decision).

 Forms of order sought

21      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs.

22      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

23      In support of its action, the applicant puts forward two pleas in law. The first plea alleges infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001). The second plea alleges breach of the principle that the applicant shall identify the goods or services for which the protection of the EU trade mark is sought with sufficient clarity and precision.

24      As regards the first plea, alleging infringement of Article 65(6) of Regulation No 207/2009, the applicant submits that the Board of Appeal, in adopting the contested decision, neither complied with the operative part of the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), nor the reasoning of the General Court which led to it.

25      In that regard, the applicant submits that the Board of Appeal incorrectly held that it was entitled to re-examine the question of law and of fact as to whether the term‘apparatus for the reproduction of sound and images’ was defined sufficiently precisely in order to satisfy the principle of partial use, since the General Court had made a contrary finding in the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950). It submits that that finding became final because it was not challenged as part of an appeal against that judgment. It takes the view that the Board of Appeal therefore incorrectly tried to argue that, because a television set could be considered an example of an apparatus for the reproduction of sound and images, that term was acceptable. Moreover, that argument does not constitute a valid response to the General Court’s finding that the term ‘apparatus for the reproduction of sound and images’ is too broad in relation to the principle of partial use. It is precisely because it is possible to distinguish, within that ‘umbrella’ term, subcategories capable of being viewed independently that the principle of partial use applies.

26      The applicant submits that the fact that the Board of Appeal stated, in paragraph 19 of the contested decision, that the principle of partial use laid down by the General Court was no longer relevant to the present case, is another example of infringement of Article 65(6) of Regulation No 207/2009.

27      EUIPO states that the contested decision clarifies certain concepts, inter alia the fact that ‘apparatus for the reproduction of sound and images’ are those which, exclusively or principally, reproduce sound and images simultaneously, which excludes video cameras or photographic apparatus. It also notes that the Board of Appeal found that the term ‘apparatus for the reproduction of sound and images’ was synonymous with the term ‘television sets’, namely a product for which genuine use of the contested mark had been proven.

28      EUIPO submits that the Board of Appeal complied with the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), by examining whether it was possible to distinguish, within the category of ‘apparatus for the reproduction of sound and images’, a homogeneous subcategory of goods which could be viewed independently. The Board of Appeal was not, however, able to identify such a subcategory, since that category contained only one type of goods, namely television sets. EUIPO adds that the applicant did not put forward such a subcategory.

29      EUIPO further states that, by including in the category ‘apparatus for the reproduction of sound and images’, in addition to the television sets, cinematographic projectors and DVD and video players, an ‘alternative explanation’ of the meaning of the term ‘apparatus for the reproduction of sound and images’ could be arrived at. It takes the view, however, that the three types of goods are not sufficiently distinct to constitute coherent categories or subcategories that can be viewed independently. In other words, it is not possible to make significant subdivisions within the category of ‘apparatus for the reproduction of sound and images’. Accordingly, the proof of genuine use of the contested mark for television sets, cinematographic projectors and DVD and video players covers the whole of the abovementioned category. In that regard, EUIPO points out that, in paragraph 41 of the first decision, the Board of Appeal found that genuine use of the contested mark had been proven for projectors and portable DVD players.

30      It should be noted that the case-law has already drawn attention to the importance, both in the European Union legal order and in the national legal orders, of the principle of res judicata. In order to ensure stability of the law and legal relations, as well as the sound administration of justice, it is important that judicial decisions which have become definitive after all rights of appeal have been exhausted, or after expiry of the time limits provided to exercise those rights, can no longer be called into question (see judgment of 19 April 2012, Artegodan v Commission, C‑221/10 P, EU:C:2012:216, paragraph 86 and the case-law cited).

31      In that context, the Court has held, first, that res judicata extends only to the matters of fact and law actually or necessarily settled by the judicial decision in question, and, secondly, that the force of res judicata attaches not only to the operative part of that decision, but also to the ratio decidendi of that decision, which is inseparable from it (see judgment of 19 April 2012, Artegodan v Commission, C‑221/10 P, EU:C:2012:216, paragraph 87 and the case-law cited).

32      As regards the goods covered by the first decision other than ‘apparatus for the reproduction of sound and images’, namely, ‘loudspeakers’, ‘loudspeaker systems’, ‘sound amplifiers’, ‘computers’, ‘video screens’, ‘television sets’ and ‘record players’, it is apparent from the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), that the General Court upheld the Board of Appeal’s finding, set out in the first decision, that proof of genuine use of the contested mark for those goods had been adduced. Moreover, that conclusion is not in any way called into question in the context of the present case.

33      As regards ‘apparatus for the reproduction of sound and images’, it is apparent from paragraphs 63 to 68 of the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), that the General Court held that that term did not designate a precise and narrowly-defined category of goods, as stated by the Board of Appeal in paragraph 46 of the first decision, but a large category of audiovisual and electronic equipment. Therefore, in accordance with the case-law cited in paragraph 61 of the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), the General Court held, in paragraph 68 of that judgment, that the proof of genuine use of the contested mark had not been adduced for that equipment.

34      Drawing the inferences from the considerations and findings set out in paragraphs 32 and 33 above, the General Court held, in paragraph 69 of the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), and point 1 of the operative part of that judgment, that the first decision had to be annulled in so far as it dismissed the action against the decision of the Cancellation Division to reject the application for revocation of the contested mark for ‘apparatus for the reproduction of sound and images’.

35      As the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950) has become final, since it was not the subject of an appeal, it must be held that it has acquired the force of res judicata. In that respect, it should be noted that the findings made by the General Court in the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), concerning the scope of the term ‘apparatus for the reproduction of sound and images’ and the lack of proof of genuine use of the contested mark for such apparatus (see paragraph 33 above), were decisive in order to support point 1 of the operative part of that judgment, which partially annulled the first decision. Therefore, they are covered by the force of res judicata which attaches to the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), and must be considered to have been finally decided.

36      Furthermore, under Article 65(6) of Regulation No 207/2009, it was for EUIPO to take the necessary measures in order to comply with the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950).

37      It is settled case-law that 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, EU:T:2009:85, paragraph 21 and the case-law cited).

38      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 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 13 April 2011, Safariland v OHIM — DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), T‑262/09, EU:T:2011:171, paragraph 41, and of 8 June 2017, Bundesverband Deutsche Tafel v EUIPO — Tiertafel Deutschland (Tafel), T‑326/16, not published, EU:T:2017:380, paragraph 19).

39      In the present case, it must be held that the Board of Appeal correctly gave effect to the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), by stating, in paragraph 14 of the contested decision, that the first decision was definitive as regards ‘loudspeakers’, ‘loudspeaker systems’, ‘sound amplifiers’, ‘computers’, ‘video screens’, ‘television sets’ and ‘record players’ and that genuine use of the contested mark had therefore been proven for those goods.

40      The Board of Appeal also properly gave effect to the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), in holding, in paragraph 13 of the contested decision, that, following the partial annulment of the first decision by the General Court, it was for the Board of Appeal to take a new decision as regards ‘apparatus for the reproduction of sound and images’, since the action brought before it by the applicant was again pending in respect of that specific aspect of the case.

41      On the other hand, by the contested decision, the Board of Appeal clearly disregarded the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), in stating, in total contradiction with the findings of the General Court which had acquired the force of res judicata (see paragraph 35 above), that the term ‘apparatus for the reproduction of sound and images’ had a clear and specific content and covered only a single type of product, namely television sets, and by inferring therefrom that proof of genuine use had been adduced in respect of ‘apparatus for the reproduction of sound and images’. It is therefore also in total contradiction with point 1 of the operative part of the judgment of 10 December 2015, Vieta (T‑690/14, not published, EU:T:2015:950), which had also acquired the force of res judicata (see paragraph 35 above), that the Fourth Board of Appeal rejected the applicant’s appeal against the decision of the Cancellation Division of 23 August 2013, thus reaffirming that the rejection of the application for revocation of the contested mark for ‘apparatus for the reproduction of sound and images’, as decided by the Cancellation Division in its aforementioned decision and subsequently by the Second Board of Appeal in the first decision, was well founded.

42      In the light of the foregoing, the first plea, alleging a breach of Article 65(6) of Regulation No 207/2009, must be upheld.

43      The contested decision must therefore be annulled, without it being necessary to examine the second plea in law.

 Costs

44      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 4 October 2016 (Case R 1010/2016-4), relating to revocation proceedings between Sony Computer Entertainment Europe Ltd and Marpefa, SL;


2.      Orders EUIPO to pay the costs.


Collins

Kancheva

Passer

Delivered in open court in Luxembourg on 8 February 2018.


E. Coulon

 

A. M. Collins

Registrar

 

President


*      Language of the case: English.