Blow for Sony in GT RACING case

The following is an article re-published from WTR Daily by Jude Antony and Sophia Steiger on the EU General Court's decision in Sony Interactive Entertainment Europe V EUIPO, concerning an opposition and the assessment of similarity.

 

• Sony opposed the registration of GT RACING in Class 18 based on its GT and GRAN TURISMO marks
• The court held that the EUIPO had not erred in finding that the signs were visually dissimilar
• The EUIPO had not erred in limiting the examination to the basis of perception of an uneducated consumer

In Sony Interactive Entertainment Europe v European Union Intellectual Property Office (EUIPO) (Case T-463/20), the General Court has dismissed an appeal from Sony against the decision of the Fourth Board of Appeal of the EUIPO upholding the Opposition Division's refusal of its opposition against an application to register the trademark GT RACING.
 
Background
 
In August 2017 Mr Wai Leong Wong filed an application to register GT RACING as an EU trademark (EUTM) in Class 18. Sony Interactive Entertainment Europe opposed based on:
 

• six EUTMs:

 
(GT Stylised')
 
GRAN TURISMO
 
GRAN TURISMO NETWORK
 

 

 
GT
 

• eight non-registered trademarks (all being variations on GT or GRAN TURISMO) used in the course of trade in the European Union or the United Kingdom.

 
Sony uses these marks for its popular Gran Turismo video game. The grounds of opposition were those set out in Articles 8(1)(b), 8(4) and 8(5) of Regulation 207/2009 (now Regulation 2017/1001). The Opposition Division rejected the entirety of the opposition, Sony appealed, and this was in turn dismissed by the Board of Appeal.
 
General Court decision
 
Sony asked the court to overturn the decision based on seven pleas in law alleging that the Board of Appeal had erred in law. The court rejected each plea:
 

• Plea 1: the board erred in the identification of the relevant public, which should be narrowed to consumers of the goods covered by the earlier marks. The court found that the goods are easily accessible, sold on the "general public market" and should be treated as everyday consumer goods. The board had correctly found that the relevant public was the general public in the European Union.
• Pleas 2 and 4: the board erred in the comparison of signs at issue, and in particular the GT stylised mark. The court held that the board had not erred in finding that the signs were visually dissimilar or in limiting the examination to the basis of perception of an uneducated consumer. Sony had argued that the educated consumer, who recognised the GT stylised mark as indicating the letters ‘GT’, should be taken into account.
• Plea 3: the board erred in the comparison of the goods. The court held that the similarity of the marks at issue had not been satisfied so there was no need to compare the goods. In any case, the goods were not used for the same purpose and had different manufacturers, marketing channels and vendors.
• Plea 5: the board erred in failing to take into consideration the other grounds of opposition set out in Articles 8(1)(b) and 8(5). The court rejected this argument as similarity between the marks and the goods had not been established, so it was not necessary to examine further conditions.
• Plea 6: the board erred in the application of the rules relating to the action of passing off. The court held that there could not be a misrepresentation as there was no evidence establishing goodwill on Sony's part and no similarly between the marks. Plea 7: the board erred in failing to take into consideration the other criteria of law relating to an action of passing off. The court reiterated that the conditions for an action of passing off are cumulative, and so failure to meet one condition meant no further examination was required.

 
Comment
 
This judgment emphasises the importance of establishing similarity between the contested mark and earlier marks in an opposition. This criterion of similarity must be examined first and, if it is not satisfied, the remaining conditions of opposition do not need to be considered. Any evidence of use, reputation or enhanced distinctiveness, although relevant in assessing the likelihood of confusion, should not be taken into account in the assessment of the similarity of the signs at issue.
 
This article first appeared in WTR Daily, part of World Trademark Review in September 2021. For further information, please go to www.worldtrademarkreview.com.