Three-dimensional marks remain a tough proposition

Hong Kong

In Sony Computer Entertainment Inc v Registrar of Trademarks, the Court of First Instance has held that Sony Computer Entertainment's application to register the shapes of its PlayStation Console, PlayStation Controller and PlayStation Memory Card as three-dimensional marks under the Hong Kong Trademarks Ordinance (Cap 43) should be refused.

In reaching its decision, the court relied on, among other things, Section 12(3)(b) of the ordinance, the case of Mega Bloks Inc v Kirkbi A/S [2005] EMTR 87 (Office for Harmonization in the Internal Market) and the various decisions made by the courts of England and Wales and the European Court of Justice (ECJ) in the case of Philips Electronics NV v Remington Consumer Products Ltd.

Section 12(3)(b) of the ordinance provides that:

"a sign shall not be registered as a trademark relating to goods if it consists exclusively of … (b) the shape of goods that is necessary to obtain a technical result."

To determine whether the shape (given its essential elements) is "necessary" to achieve a technical result, the court relied on the following test suggested in the Mega Bloks Case: 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.

In the court's view, 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. The court based its finding on reasoning from the Court of Appeal of England and Wales's decision in Philips Electronics NV v Remington Consumer Products Ltd.

The court accordingly held that the shapes of the PlayStation Consoles, Controllers and Memory Card were not registrable because of the restriction imposed by Section 12(3)(b).

It rejected the argument that a specific shape is not 'necessary' to achieve a certain result because a number of other shapes are possible options of obtaining that result. According to the court, accepting that argument would mean that, over time, the other available shapes could individually be registered as marks, and the range of possible solutions to the technical problem of obtaining the result would be closed to all. The available solutions would then become the exclusive property of the registered proprietors of each shape and that would be contrary to the rationale behind Section 12(3)(b) of the ordinance.

While the various cited decisions are quick to recognize that there is nothing in the fundamental principles of trademark law itself which precludes simultaneous protection of industrial designs in the form of a patent or a registered design if their different criteria of protection are met, the policy of not allowing trademark law to confer a monopoly (which can be maintained perpetually by payment of renewal fees) for technical solutions or utilitarian features of goods (protectable for only a limited time by patent, utility model or registered design) is also emphasized. Trademark laws encourage competition by facilitating the advertising and marketing of goods as well as protect the public against confusion as to the source of supply. On the other hand, utility and design laws seek to foster and reward innovation by granting a limited period of monopoly to the right holder in exchange for free use by the public after expiry of the protection period.

The present decision confirms the general judicial trend around the world to adopt a restrictive approach towards registration of three-dimensional trademarks in relation to functional items.

CK Kwong, Sit Fung Kwong & Shum in association with A J Park, Hong Kong

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