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
||IN THE MATTER of an appeal from the decision of the Registrar of Trade Marks (the “Respondent”) dated 13 September 2006
||IN THE MATTER of the Trade Marks Ordinance, Cap. 43
||SONY COMPUTER ENTERTAINMENT INC
|| REGISTRAR OF TRADE MARKS
Before: Hon Reyes J in Court
Date of Hearing: 15 May 2007
Date of Judgment: 18 May 2007
J U D G M E N T
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.
A. Whether shape “necessary to obtain a technical result”
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.  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  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  EWCA Civ 16,  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.  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....