SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS

CACV 166/2007, CACV 167/2007, CACV 168/2007, CACV 169/2007,

CACV 170/2007 AND CACV 171/2007

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF APPEAL

CIVIL APPEAL NOS. 166, 167, 168, 169, 170 AND 171 OF 2007

(ON APPEAL FROM HCMP NOS. 2616, 2617, 2618, 2619, 2620 AND

2621 OF 2006)

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REASONS FOR JUDGMENT

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Hon Rogers VP:

1.  These were appeals from a judgment of Reyes J given on 18 May 2007.  By that judgment the judge dismissed appeals from the decisions of the hearing officer acting on behalf of the Registrar of Trade Marks refusing 6 applications for Trade Marks on 13 September 2006.  At the conclusion of the hearing of these appeals, they were dismissed with reasons to be given in writing.

The applications

2.  In June 2001 the applicant submitted 6 applications for registration of trade marks.  Each application form indicates that the mark is not a word or picture but is 3-dimensional.  The representations of each of the marks consisted of a number of photographs of what the evidence showed were different parts of different generations of an electronic game sold by the applicant under the name PlayStation.

3.  At the date of the applications the ordinance in force was the Trade Marks Ordinance Cap. 43 (“the Ordinance”).  Although the Trade Marks Ordinance now in force is Cap. 559, the transitional provisions contained in that latter ordinance provide that the application must be considered under the Ordinance.  For completeness I would add that this court was informed that the applicant has submitted new applications under the ordinance at present in force.

4.  In 1996 the Trade Marks Ordinance Cap. 43 was amended to introduce a new definition of “mark”.  Although it would appear that when the Bill to introduce the amendment was first promulgated it had been intended to adopt a definition based on the United Kingdom Act which had been introduced to reflect the European position, after the Bill had been considered, the definition of “mark” was taken from the TRIPS agreement.  For the purposes of this case it is unnecessary for this court to consider what precisely fell within the definition of “mark”.  Under the new ordinance, Cap. 559, sounds, smells, and the shape of goods or their packaging are specifically included in the definition of trade mark.

5.  The definition of “mark” in the Ordinance as relevant to these proceedings was:

“means any sign that is visually perceptible and capable of being represented graphically and may, in particular, consist of words, personal names, letters, numerals, figurative elements or combination of colours, and included any combination of such signs”

6.  Under the current Ordinance Cap. 559 a trade mark:

“may consist of words (including personal names), indications, designs, letters, characters, numerals, figurative elements, colours, sounds, smells, the shape of goods or their packaging and any combination of such signs”

7.  Whether or not the definition in the Ordinance in the period following the amendment in 1996 would also include such things as sounds, smells and the shape of goods or their packaging should, in my view, be left open.  I do not consider that it could be a question of discretion of the Registrar as to whether such matters were open to registration.  It must be a question of whether those matters would come within the definition of “mark” or not.  In 1996, it would have constituted a radical and conceptual change in what was registrable as a trade mark for sounds, smells and the shape of goods or their packaging to be included.  For the purposes of this case, however, Mr Yan SC, who appeared on behalf of the Registrar, indicated that the Registrar had accepted that a 3-dimensional mark was registrable under the Ordinance.  Whether or not that would be so, it would not, as it turns out, affect the outcome of this case.

The decision of the hearing officer

8.  In his decision, the hearing officer considered first of all whether registration as trade marks would be contrary to section 12(3)(b) of the Ordinance.  He came to the conclusion that registration would not be permissible because of the provisions of that section.  He then went on to consider whether the applications were objectionable by reason of not complying with sections 9 and 10 of the Ordinance.  In paragraph 24 of his decision relating to application 9987 of 2001, the subject of appeal 166 of 2007, he said:

“To fall within these sections, the subject of mark must be distinctive.  Distinctiveness means a mark is adapted to or is capable of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade, from goods where no such connection subsists.  In determining whether any trade mark is adapted to or capable of distinguishing as aforesaid, the tribunal must have regard to the extent to which the trade mark is inherently adapted to or capable of distinguishing; and to the extent to which, by reason of the use of the trade mark or other circumstances, the trade mark is in fact adapted to or capable of distinguishing as aforesaid (sections 9(2) and 10(2)).  The burden lies on the Applicant to establish that the subject mark is adapted to or capable of distinguishing.”

9.  The hearing officer then went on to consider the cases in relation to distinctiveness and then he considered the evidence, such as it was, that had been filed.  After doing that he said:

“30.  Having considered the evidence as a whole, I cannot be satisfied that the subject mark would be perceived as having any trade mark significance.  I accept that sometimes a non-distinctive sign used together with a distinctive mark on the same product can come to be regarded as a second trade mark capable by itself of distinguishing an applicant's goods, but that has not been shown to be the case here.

31.   For the reasons given above, I find that the subject mark is neither inherently adapted to nor capable of distinguishing the Applicant's goods from those of other manufacturers, and has not been shown to do so in fact.  No other circumstances had been placed before me.  The subject mark is therefore found to be unregistrable pursuant to sections 9(1)(e) and 10(1) of the Ordinance.”

10.  The hearing officer’s decision in respect of the other applications followed similar lines.

The judgment below

11.  The judge came to the same conclusion as the hearing officer and essentially adopted his conclusions, particularly in respect of the matter of distinctiveness.

This appeal

12.  On this appeal Ms Tam SC, who appeared on behalf of the applicant, raised considerable argument in respect of section 12(3)(b) of the Ordinance, but when it came to the question of distinctiveness she said:

“My Lord the distinctiveness issue.  We realise we are on very thin grounds and we readily accept that these marks are not inherently adapted to distinguish.  That is for sure.  My Lords, we are also are prepared to accept that they may not be inherently capable of distinguishing but my Lords all we seek to achieve is to be allowed to show evidence in due course if we should gain any ground in the registrability of the shapes.  We accept that we do not have enough evidence to show that there is factual distinctiveness.  I do not wish to waste this Court’s time.”

13.  It was then pointed out that it would not be possible for these applications to continue on the basis of further evidence being submitted to the Registrar and after Mr Yan had briefly addressed the court, in her reply speech, Ms Tam attempted to resile somewhat from her position and submitted, without, with due respect, a great deal of conviction, that there had been some evidence of distinctiveness.

14.  In my view the hearing officer approached the matter in the correct way and I do not consider that there could be any criticism of the way in which he reached his conclusion that the marks were unregistrable if, for no other reason, they lacked inherent distinctiveness which would prevent registration because of the provisions of section 9 of the Ordinance and section 10 without, at least, relevant evidence.  The judge below, also clearly agreed with the hearing officer’s approach.  In those circumstances I do not consider that it is open to this court to alter that decision and, indeed, I would say that I, too, would have reached the same conclusions.

15.  In view of the inevitable conclusion in respect of distinctiveness, this court indicated that it considered it would be inappropriate to go on to consider any matters under section 12.  Anything this court would say on the matter would be obiter.  I would also point out that there was little, if any, evidence relevant to the section 12 issues, which, in my view, would be necessary if this court were to overrule the findings of the hearing officer and the court below.

Hon Le Pichon JA:

16.  I agree.

Hon Yuen JA:

17.  I agree.