SONY COMPUTER ENTERTAINMENT INC v. REGISTRAR OF TRADE MARKS

HCMP 2616/2006
HCMP 2617/2006
HCMP 2618/2006
HCMP 2619/2006
HCMP 2620/2006
HCMP 2621/2006

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

MISCELLANEOUS PROCEEDINGS NOS. 2616, 2617, 2618, 2619, 2620 & 2621 OF 2006

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J U D G M E N T

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I.     INTRODUCTION

1.  On 20 June 2001 Sony applied to register the following as 3-dimensional marks under the Trade Marks Ordinance (Cap.43) (TMO):-

(1)     The shape of its Play Station 1st Generation Console product.

(2)     The shape of its PSone Console product.

(3)     The shape of its Play Station 2 Console product.

(4)     The shape of its Play Station Dual Shock Controller product.

(5)     The shape of its Play Station Analog Controller product.

(6)     The shape of its Play Station Memory Card product.

2.  Registration of each product was sought under in Class 9 of Part A of the Register of Trade Marks.  The new Trade Marks Ordinance (Cap.559) only having come into force on 4 April 2003, the Registrar dealt with Sony’s applications under Cap. 43.

3.  The Registrar refused registration in all cases on 2 broad grounds.

4.  First, the Registrar found that the relevant shapes were “necessary to obtain a technical result”.  The shapes were accordingly not registrable by reason of TMO s.12(3)(b).

5.  Second, the shapes were neither “distinctive” nor “capable of distinguishing” as respectively required by TMO ss. 9 (for Part A of the Register) and 10 (for Part B of the Register).

6.  By this application, Sony appeals against the Registrar’s decision.  I therefore have to consider whether the Registrar was right to refuse registration.

II.    DISCUSSION

A.    Whether shape “necessary to obtain a technical result”

A.1  Law

7.  TMO s.12(3)(b) provides that a sign shall not be registered as a trade mark relating to goods if it consists exclusively of “the shape of goods that is necessary to obtain a technical result”.

8.  The rationale behind the rule is to prevent a person from obtaining a monopoly over a technical solution to a functional problem in the manufacture of some product. 

9.  If a shape constituting a technical solution to a functional problem were registered as someone’s mark, that person would in effect obtain exclusive rights to the solution.  The result could be to stifle competition.  Others would be precluded from using the particular technical solution to resolve a similar functional problem in a rival product.

10.  Such outcome would not be of benefit to society at large. The public interest requires that the full range of technical solutions to a problem should be freely available to all and not reserved to the benefit of a single person.  See Philips Electronics NV v. Remington Consumer Products Ltd. [2003] RPC 2 (ECJ), at §§78-79.

11.  There is case law suggesting that the word “technical” has the same interpretation in trade mark law as it bears in patent law.  Thus, much as with an invention, a result is “technical” if it “relates to technology”.  See Mega Bloks Inc. v. Kirkbi A/S [2005] EMTR 87 (OHIM), at §§56-64.

12.  It may be thought that the definition of “technical” just given is tautological.  This is because both “technical” and “technology” derive from the same root, the Greek word “technê” (meaning “art” in the sense of “skill”).  One may then merely be using a variant of the word “technical” to define it.

13.  But given that “technology” is the practice of the applied sciences that have practical value or industrial use, I believe that the definition in Mega Bloks has some utility.  It suggests that a “technical result” denotes a situation where know-how or science (in the broadest sense) has been applied to achieve a practical or functional outcome.

14.  Mr. Ling (appearing for the Registrar) disputes the gloss on the word “technical” found in Mega Bloks.  Mr. Ling suggests that “technical” merely means “functional”.

15.  However, I doubt that much will ride in this case on whether I read “technical” as “relating to technology” or as synonymous with “functional”.  For present purposes, I shall proceed on the basis that Mega Bloks is right to equate “technical” with “related to technology”. 

16.  In deciding whether a particular shape is necessary to achieve a technical result, one must first determine what the essential features of the shape are. 

17.  Here the Court considers the visual impact of the shape on the perception of the reasonable and informed average customer of the type of goods in question.  Not every feature carries the same visual impact.  On the contrary, the essential features of the relevant product are those which contribute most to the overall impression of the hypothetical average customer.  See Koninklijke Philips NV v. Remington [2006] EWCA Civ 16, [2006] FSR 30 (CA) (at §52).

18.  The next step is to assess whether the shape (given its essential elements) is “necessary” to achieve a technical result. 

19.  Mega Bloks (at §46) suggests that this exercise should be conducted as follows:-

“[T]he test is whether if the respective element was absent, the technical result would not be obtained, and if the respective element was altered substantially, the technical result would also alter substantially.”

20.  Mr. Ling disputes this test.  He suggests that by “necessary” is simply meant that a technical result is “attributable” (as opposed to “only attributable”) to a particular form.

21.  I am not sure that Mr. Ling is right.  I think that his definition understates the effect of the word “necessary” in TMO s.12(3)(b).

22.  Accordingly, I shall proceed on the basis of the test for “necessary” proposed in Mega Bloks.  Thus, I have to decide whether the achievement of a technical result dictates or constrains the shape which is sought to be registered as a mark. 

23.  Once it is established that a shape is necessary to obtain a technical result, it is irrelevant that the same technical result can be achieved through other shapes. 

24.  It will be rare for a technical problem to have only sone solution.  It will be more common that a technical result R can be achieved through (say) the use of shapes A, B, C, D or E.  But that does not mean that shape A is not necessary to (or is not dictated or constrained by) the desire to achieve R.

25.  In our example, shape A is still intimately connected with the accomplishment of R.  The need to achieve R constrains the types of shapes which can be deployed for a product.  Unless one of shapes A, B, C, D or E is used, one cannot technically obtain the desired outcome R.

26.  It is the public’s access to this full range of solutions (shapes A, B, C, D and E in our example) which the restriction in TMO s.12(3)(b) is meant to safeguard.  That range of solutions to a specific problem (the achievement of R) should be open to all persons to employ as they see fit.

27.  Consider an argument that shape A is not “necessary” to achieve R because shapes A to E are possible options of obtaining that result.  The argument, if right, would mean that over time shapes A to E could individually be registered as marks.  Over time, the range of possible solutions to the technical problem of obtaining R will be closed to all.  The available solutions would become the exclusive preserve of the registered proprietors of each shape.  That would be contrary to the rationale behind TMO s.12(3)(b).  It follows that the argument cannot be right. 

28.  Aldous LJ expressed the point more succinctly in Philips Electronics Ltd. v. Remington Consumer Products Ltd. [1999] RPC 809 (CA), at 812-3:-

“In my judgment the restriction upon registration imposed by the words ‘which is necessary to obtain a technical result’ is not overcome by establishing that there are other shapes which can obtain the same technical result.  All that has to be shown is that the essential features of the shape are attributable only to the technical result.  It is in that sense that the shape is necessary to obtain the technical result.  To adopt the meaning suggested by Philips will enable a trader or traders to obtain registration of all the alternative shapes that were practicable to achieve the desired technical result.  That would result in the subsection being given a meaning which would not achieve the purpose for which I believe it was intended....”

29.  Ms. Tam submits that the existence of many shapes in the market for a given type of product may indicate that a particular shape is not “necessary” to achieve a certain technical result.

30.  But I do not think that her submission can be right.  It seems to me that her proposition contradicts the dictum of Aldous LJ cited above.

A.2  Application of law to fact

A.2.1 The Registrar’s findings

31.  The Registrar found that the shape of the 3 consoles concerned here was essentially that of a “flat rectangular box”. He believed that shape was necessary for the obtaining of a technical result.

32.  For example, he stated in relation to the shape of the Play Station 1st Generation Console:-

“When used in relation to game consoles, the shape of a flat rectangular box is a regular and practical shape to provide room for housing all the parts and components of a game console as well as for storing an external object such as a memory card or a disc which needs to be inserted into the body of the game console.  The flat shape with a broad rectangular base also allows the game console to stand firmly and securely on a surface so that one could easily operate the game console by, for example, pressing a button on it or inserting a card or disc into it.  The shape is therefore primarily functional and is intended to achieve a technical result.”

33.  He made similar observations in relation to the Play Station 2 and PSone consoles.

34.  The Registrar found that the shape of the Analog Controller was essentially that of “two short round legs connected by a rung”.  He similarly described the shape of the Dual Shock Controller as being essentially “two short round legs connected by a rung with two round toggles”.  He thought that both shapes were necessary for achieving a technical result.

35.  For example, he said of the shape of the Analog Controller:-

“When used in relation to analog controllers, the two short round legs serve as two handles which enable a player to grip the controller firmly and comfortably by both hands, and yet allow the player to use his fingers of both hands to control the games easily by pressing the control buttons.  The essential feature of the subject mark is therefore primarily functional and is intended to achieve the technical result of enabling a player to hold the controller securely and comfortably and at the same time to control the games with his fingers.”

36.  The Registrar found that the memory card was essentially a “flat rectangular shape”.

37.  He thought that this was necessary to achieve a technical result as follows:-

“I find that the essential feature of the subject mark, namely, its flat rectangular shape, when considered as a whole, is exclusively functional.  Apart from serving the function of housing and protecting the memory storage device, the flat rectangular shape of the subject mark matches exactly with the flat rectangular aperture of the game console so that goods such as a memory card or a cartridge of that shape can be smoothly and easily inserted into or retrieved from the aperture.  By slotting the card or the cartridge into the aperture, the memory storage device embedded therein can be connected with the game console.  Therefore, the essential shape of the subject mark is necessary to obtain a technical result, namely, to enable the goods to fit the aperture of the game console so that they can be easily slotted into the game console and securely connected with it.”

38.  I note that the Registrar also considered whether the memory card could be registered in light of TMO s.12(3)(a).  That prohibits registration of a shape where it “results from the nature of the goods themselves”.

39.  The Registrar held that the memory card was not registrable under s.12(3)(a) because a flat and rectangular shape was “the general and natural shape of a memory card”.  Consequently, the card had “a basic shape that should be available for use by the public at large”.

A.2.2 Sony’s criticisms

40.  Ms. Winnie Tam SC (appearing for Sony) criticises the Registrar’s conclusions on a number of bases.

41.  In relation to the 3 consoles, Ms. Tam had 3 complaints.

42.  First, the Registrar essentially found that the shapes of the consoles functioned as “containers”.  Ms. Tam submits that this cannot be a technical result.

43.  Second, if the Registrar was saying that the consoles functioned as the Central Processing Unit (CPU) of a Play Station product, that function might be a technical one.  But (Ms. Tam says) it would be the contents of the consoles and not the shapes of the consoles which achieved that technical result.

44.  Third, Ms. Tam submits that the Registrar did not consider whether the shapes were “necessary” to obtain a technical result. The consoles (Ms. Tam argues) could be in many other different shapes without substantially affecting their function.  There are many sizes and shapes of consoles for rival products on sale in the market today.

45.  In relation to the 2 controllers, Ms. Tam accepted that some features achieve a technical result, namely, to enable a player to play games by pressing various buttons on the controller. 

46.  But (Ms. Tam contended) the shape of the controllers is not necessary to obtain a technical result.  The proof of this (according to Ms. Tam) is that many other shapes of controllers are possible and are actually sold in the market in connection with rival products.

47.  In relation to the memory card, Ms. Tam accepted in oral submission that, insofar as the shape of the card served to house and protect a memory storage device, she would have difficulty in arguing that was not a technical result.

48.  But Ms. Tam pointed out that the memory storage device was encased in only about half of the memory card.  The remaining half had little other function (Ms. Tam suggested) apart possibly from providing a grip for the card.

49.  Further, insofar as the shape of the card enabled it to be smoothly and easily inserted into a controller, that cannot (Ms. Tam said) be a technical result.  This is because a connection point between controller and memory card need not be a flat rectangular aperture.

50.  Ms. Tam also suggested that the Registrar failed to consider whether the card’s shape was wholly necessary to obtain a technical result.  This is because memory can be stored in cards having different shapes.

51.  I am not persuaded by Ms. Tam’s submissions.

A.2.2A     The consoles

52.  In my judgment the consoles are indeed essentially flat rectangular boxes. 

53.  It is true Play Station 2 physically comprises (as the Registrar observed) “two rectangular sections of different sizes [with] the two edges of the larger top section featur[ing] a ‘grooved design’”.  But (as the Registrar found) Play Station 2 remains in essence a rectangular box.

54.  I think, then, that the Registrar rightly held that one must consider the proposed mark as a whole.  He said:-

“The fact that a shape consists of certain aesthetic or non-functional features does not preclude the operation of section 12(3)(b) if [the features] are not the essential features or they are merely part of the essential features the totality of which is to perform a function attributable to a technical result.”

55.  To the extent that he held that the rectangular boxes functioned as containers, that would still be a technical result. 

56.  A game console manufacturer is faced with the technical problems of storing and protecting a CPU within some encasing unit which can be placed firmly and securely on a surface and be easily operated.  An obvious solution to the problem (but by no means the only solution) would be to use a flat rectangular box as an encasing.

57.  Ms. Tam suggests that a whole raft of shapes (for example, a cube, cylinder or pyramid) is possible.  But, as already discussed, the existence of a range of possible solutions to the problems of CPU storage and operational stability is beside the point.

58.  Applying the Mega Bloks test, if one takes away the shape’s flatness or alters its volume by removing its right-angularity, there will be a significant effect on the achievement of the technical result. 

59.  Something which is not flat will be unstable on the ground.

60.  On the other hand, some other shape (for instance, a pyramid or cylinder) will not have the same storage capacity for the CPU and whatever else goes inside the console.  With some other shape, the CPU may even have to be configured (packed into its protective encasing) in some awkward or less optimal manner.

61.  Like the Registrar, I am consequently unable to divorce the consoles’ essential feature of a flat rectangular box from the technical result which the consoles are meant to serve.

62.  In respect of Play Station 2, the Registrar stated that the console could be placed both horizontally and vertically. 

63.  Ms. Tam informs me that the Play Station 2 console actually comes with a separate stand into which the console can be slotted so as to stand horizontally or vertically.  The stand, however, was not produced to the Court (or the Registrar) as it did not form part of the shape which was sought to be registered.

64.  I do not think that the existence of the stand affects the analysis.

65.  The flatness and right-angularity of Play Station 2 enables it to sit firmly and securely within its stand.  The shape is still necessary to provide stability to the console when resting on a surface, whether that be the console’s purpose-built stand or any other surface.

A.2.2B  The controllers

66.  I believe that the Registrar correctly concluded that TMO s.12(3)(b) applied.

67.  I do not accept Ms. Tam’s submission that, because there are other forms of controllers in the market today, the shapes of Sony’s controllers are not necessary to achieve a technical result.

68.  As mentioned above, there may be different solutions to a technical problem.  But the existence of other possible solutions does not preclude a specific form being functionally directed as a means of addressing a particular technical problem.

69.  In the case of the controllers, as the Registrar identified, the difficulty is to come up with a shape which enables a user to hold a unit securely and comfortably with both hands while enabling him to control a game with the fingers of both hands. 

70.  The essential shape of “two short round legs connected by a rung” with or without two toggles is a means of resolving this functional problem. 

71.  Without the 2 short legs, it would not be possible to grip the unit firmly with both hands.

72.  Without the rung to hold the 2 short legs together, one could not operate the buttons on the 2 short legs securely with one’s fingers.  If each hand were simply holding a short leg with nothing keeping the legs together, one’s hands would be “floating about,” making the coordinated pressing of control buttons with one’s fingers more difficult.

73.  Thus, the test for “necessary” in Mega Bloks is met.  The alteration of form would impair function.  Changing shape would substantially affect the secure and efficient operation of the controllers by a user.

74.  Ms. Tam submitted that there was more to the controllers than 2 short legs connected by a rung.  She pointed to flat circular platforms on the top of each leg.

75.  But I do not think that the informed average customer would perceive those circular platforms as essential features.  The circles are an aesthetic, embellishment on the essential shape.  The key elements of the shape are on the contrary those identified by the Registrar.

A.2.2C  The memory card

76.  Ms. Tam faintly queried the Registrar’s conclusion that the memory card was essentially a “flat rectangular shape”.  She noted that the card had 2 rounded corners and some ribbing on its side and submitted that, given such features, the card could not be essentially rectangular.

77.  I think, however, that the Registrar was right.

78.  The card is placed into a console with a particular orientation.  Take the front of the card to be that end which is to be inserted into a console.  Take the top of the card to be that side of the card which must be on top when inserted into the console.

79.  Then the card is basically a small, flat, thin rectangular shape. 

80.  The 2 corners at the back of the card are only slightly curved.  They do not affect an overall perception of rectangularity. 

81.  Similarly, the ribbing (which only runs along the 2 sides of the back half of the card) does not detract from that essential visual perception.

82.  Assume (because there is only Ms. Tam’s word for this) that the memory storage device encased within the card only physically occupies the front half of the card.

83.  Functionally, that does not render the card any less of a container fulfilling the technical function of storing memory.

84.  In any event, as the Registrar held, the front half is designed in the way it is, in order to enable smooth placement within a rectangular opening in the console.  That smooth placement enables the storage device housed within the card to be connected to the console.  This is plainly a technical function.

85.  Ms. Tam argues that the aperture need not have been rectangular, but could have been some other shape.  I do not think that the point answers the Registrar.  The card and its slot in the console have to match.  Given that the console has a rectangular opening, to achieve a connection the card must have a corresponding shape.

86.  As for the back half of the card, it gives room for a user firmly to grip the card as one places it into a console.  One can either grip the card on the 2 flat areas at the back half of the top and bottom faces of the card or on the ribbing of the card’s 2 thinner sides.  The area for gripping the card thus achieves the technical result of facilitating a smooth insertion of the card into its console.

87.  Now apply the Mega Bloks test.  If the card were not rectangular, it would not fit smoothly into its designated slot . Neither would there be a place for a firm grip while inserting the card into its slot.  Further, a different shape may necessitate a re-design of the storage device protected within the card.  A change in shape could thus significantly affect the functionality of the card and impair the desired technical result.

88.  Accordingly, I do not accept the contention that, taken as a whole, the shape of the card does not achieve a technical result. 

89.  Again, the mere fact that storage devices may come in different shapes, does not detract from my conclusion that in this specific case the desired functionality constrained the shape of the memory card.

90.  In light of my conclusion on TMO s.12(3)(b), I do not need to deal with the Registrar’s alternative conclusion in relation to s.12(3)(a).  The latter sub-section provides that a shape is not registrable if “the shape… results from the nature of the goods themselves”.  I merely state that, for similar reasons to those set out above, I believe that the Registrar correctly concluded that s.12(3)(a) barred the memory card’s registration.

B.    Whether shape “distinctive” or “capable of distinguishing”

B.1  Law

91.  TMO s.9 provides that, to be registrable in Part A of the Register, a mark must be “distinctive”.  

92.  By TMO s.9(3) distinctiveness is to be determined by reference to the extent to which:-

“(a)    the trade mark is inherently adapted to distinguish...; and

(b)     by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact adapted to distinguish...”

93.  TMO s.10 provides that, to be registrable in Part B of the Register, a mark must be “capable of distinguishing”.  

94.  By TMO s.10(3) this capability is to be determined by reference to the extent to which:-

“(a)    the trade mark is inherently capable of distinguishing...; and

(b)     by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing...”

95.  “Distinctiveness” of a mark within the terms of s.9 is generally assessed by reference to the following test:-

“[W]hether other traders are likely, in the ordinary course of their business and without any improper motives, to desire to use the [mark], or some mark nearly resembling it, upon or in connection with their own goods.”

See Smith, Kline and French Laboratories Ltd. v. Sterling-Winthrop Group Ltd. [1976] RPC 511, at 539 (per Lord Diplock, citing Lord Parker in W & G’s Case (1930) 30 RPC 660, at 673).

96.  The test in s.9 imposes a heavier burden than that in s.10.  A mark may be “capable of distinguishing” in the sense that distinctiveness can be acquired over time through appropriate use of the mark.

B.2        Application of law to fact

B.2.1     The Registrar’s findings

97.  Having held against Sony on TMO s.12(3)(b), it was strictly unnecessary for the Registrar to consider the distinctiveness of the various shapes sought to be registered.  However, for the sake of completeness, he proceeded to deal with the issue.

98.  In the case of the 3 consoles, he held that the essential shape of a flat rectangular box “represents a very common shape of game consoles”.

99.  He said:-

“The answer to the question of whether other traders would legitimately desire to use a shape which is essentially similar or identical to the subject mark upon their goods must undoubtedly be in the positive.  If the subject mark were to be registered, other manufacturers of game consoles would not be able to produce their products in this shape or a shape similar to it.  That being the case, the subject mark is not inherently adapted to distinguish or capable of distinguishing [Sony’s] goods from the goods of others.”

100.  The Registrar then assessed whether the shape of the consoles was factually distinctive.  He concluded that was not the case.

101.  For example, in relation to Play Station 1st Generation Console, he said:-

“....  In any event, in the present application I do not consider that factual distinctiveness of the mark has been proved to any extent on the basis of the two statutory declarations submitted by [Sony].

Miss Monique Woo’s statutory declaration has little relevance in demonstrating the factual distinctiveness of the subject mark since it merely shows the legal fees incurred on the protection of [Sony’s] trade marks in Hong Kong and the number of counterfeit products bearing [Sony’s] trade mark seized in Hong Kong between 1996 and 2001.

In Mr. Sumio Ogino’s statutory declaration, although the subject mark has been shown to be used in respect of game consoles (but not any of the other applied-for goods), there is no evidence of use of the subject mark for game consoles on its own and none that would satisfy me that it has acquired recognition on its own as a badge of origin, assuming that it has at least some inherent adaptability to distinguish or capability of distinguishing.  Copies of advertising and promotional materials attached to the statutory declaration show that the subject mark was not used on its own for game consoles but used with other distinctive marks...  These marks are more readily recognizable as a trade mark because the public is more inclined to recognize a word mark or a device as an indication of trade origin of the product.  The public is less likely to view a mark as a sign to designate trade origin where the mark is the appearance of the product itself.  Even though it was declared that [Sony’s] sales of products in Hong Kong were significant and that [Sony] had spent millions of dollars on promoting the products, without any evidence showing the use of the subject mark on its own, there is no evidence showing the use of the subject mark on its own.  I am not convinced that the subject mark has in fact become distinctive in that it would be perceived as a badge of origin.  Consumers would simply see it as the shape of the product and nothing more.

Having considered the evidence as a whole, I cannot be satisfied that the subject mark would be perceived as having any trade mark significance....”

102.  In the case of the 2 controllers, the Registrar thought that the essential shape of 2 round legs connected by a rung was a common shape for controllers.  He made similar remarks about their lack of distinctiveness or capability of distinguishing as those he made in the context of the 3 consoles.

103.  In the case of the memory card, the Registrar found that the product “represents the most common, if not the only, shape of the memory cards”.  He therefore came to a negative conclusion on registrability for similar reasons to those given in connection with the consoles and controllers.

B.2.2   Sony’s criticisms

104.  Ms. Tam submits that the Registrar adopted an “over-generalised description” to identify the shapes of the 3 consoles, 2 controllers and memory card. 

105.  Ms. Tam suggests that the consoles are “invented shapes” which are different from each other, having differing proportions and configurations.

106.  Ms. Tam says that there are many variants of controller and there is no common shape for them.

107.  Ms. Tam contends that, on the evidence, there are many different shapes of memory cards.  There is no evidence that a rectangle is the most common form. 

108.  Further, according to Ms. Tam, the memory card is distinctive on its own.  This is because of its 2 rounded corners and ribbing, as well as its specific dimensions.

109.  Ms. Tam further submits that there is enough evidence to support factual distinctiveness in all products.  This is because (Ms. Tam says) the evidence is that they have been sold here since 1996 and substantial sums have been used in their promotion here.  Infringers (she points out) have attempted to imitate the shape of the products.

110.  Ms. Tam finally contends that the use of other Sony marks on the consoles should not affect the distinctiveness of their shape.

111.  I do not agree with Ms. Tam’s submissions.

B.2.2A  The consoles

112.  I do not find the Registrar’s identification of the shape to be over-generalised. 

113.  I do not accept that the consoles are “invented shapes”.

114.  I think that, visually, the consoles are essentially rectangular boxes of the sort commonly used as consoles to house and protect CPUs.  There may well be other shapes of consoles, but that cannot alter the fact that a rectangular box is a common (if not the most common) shape.

115.  That the 3 consoles have different dimensions among them does not seem to me relevant.  Given that a rectangular box is a common form of console, it is difficult to see how a box of any specific dimensions can inherently connote much more than a function. 

116.  In other words, no matter how extensive the user historically, all that a rectangular box might connote would be “this is a game console”.  As a common shape, it cannot distinguish (or be “capable of distinguishing”) a console originating from Sony.

117.  Further, I agree with the Registrar’s remarks on the evidence adduced to show factual distinctiveness. 

118.  In particular, evidence that the products have been marketed extensively for over 10 years, does not of itself establish that the shape has become distinctive in people’s minds of a Sony origin. 

119.  I am similarly unable to deduce from the mere fact that infringers have manufactured their goods to look like Sony products that the shape of such Sony products has become distinctive.

120.  An infringer who wished to pass his goods off as those of Sony might well copy the get-up of Sony products.  He would presumably incorporate various Sony features into his goods.  But this by itself can have no significant bearing on the question whether a competitor can or cannot legitimately employ the shape of a rectangular box, a commonly-used shape, as the console for a rival product.

121.  Finally, I agree with the Registrar that, given that Sony products (including its consoles) bear other Sony trade marks, it is far from clear whether it is the latter trade marks or the very shapes of the products which distinguish the products in the public mind.

122.  Ms. Tam has referred me to Application by Freshfood Holdings Pte Ltd (2005) 64 IPR 607.  There the hearing officer observed in the circumstances of that case (at §26);-

“A label would not obscure the features of this shape trade mark.  The Effem Foods case can be readily distinguished because evidence showed that the series of grooves present on the Effem bottle or jar shapes were obscured by the label when the trade mark was in use.  Here, the potential application of a label to the applied-for shape trade mark would not detract from or obscure the shape -- and, as far as the prima facie registrability of the trade mark is concerned, it is inappropriate to consult evidence to show that it would.  Moreover, in situations when the shape trade mark is prima facie inherently adapted to distinguish, concerns by the examiner as to whether a label will obscure the trade mark function of the shape are somewhat akin to concerns that a trader might use a word trade mark which is otherwise capable of distinguishing in a manner where it might not be visible in trade....”

123.  Ms. Tam argues that the other Sony trade marks placed on products (such as the 3 consoles) would not affect the distinctiveness of the shape mark, so long as such other marks did not obscure the shape.

124.  That may be so.  But that does not answer the Registrar’s point. I do not think that reference to the dictum from Freshfood advances Sony’s case.

125.  Ms Tam’s argument assumes that the shapes involved here are inherently distinctive.  However, the Registrar did not think that any of the Sony product shapes sought to be registered was inherently distinctive.

126.  On the other hand, in determining whether the shape mark was factually distinctive, the Registrar found the evidence adduced by Sony to be unhelpful.  In his view, there was even a question on the available material whether any “distinctiveness” possibly attaching to a product was attributable to the product’s shape or merely to other Sony trade marks impressed on the product.

127.  This seems to me a proper stance for the Registrar to have taken.  Whether or not other Sony marks obscured the relevant shape was beside the point.  The pertinent question was whether, on the material adduced by Sony, the Registrar could conclude that the shape mark (as opposed to any other Sony mark also found on a relevant product) had acquired a distinctiveness of its own as a matter of fact.

B.2.2B  The controllers

128.  In my view, the Registrar rightly found on the evidence that two short legs connected by a rung was a common form of controller.  It might not be the only variant, but that does not render its essential shape uncommon. 

129.  In those premises, the Registrar properly concluded that the shape of the controllers inherently lacked distinctiveness or the capability of distinguishing.  The shape by its nature could not be a badge of a Sony product.

130.  On factual distinctiveness, my observations in relation to the 3 consoles are equally applicable.

B.2.2C  The memory card

131.  By any reckoning, a rectangle must be a common form of memory card (if not the most common).  As already stated, the 2 curved corners and the ribbing on the sides of the card would not alter the general visual perception of the card as a simple rectangle.

132.  Accordingly, for reasons similar to those already given in relation to the consoles and controllers, I believe that the Registrar came to the correct conclusion on the memory card.

III.   CONCLUSION

133.  Sony’s appeals against the Registrar fail.  The shapes sought to be registered as trade marks are not capable of being so registered by reason of TMO s.12(3)(b).  Further, the shapes are neither distinctive nor capable of distinguishing Sony’s products within the terms of TMO ss.9 and 10.

134.  Sony’s various applications are accordingly dismissed.

135.  There will be an Order Nisi that Sony pay the Registrar’s costs, such costs are to be taxed if not agreed.