Sony Interactive Entertainment SIE, recognized as a world leader in interactive and digital entertainment, is responsible for the PlayStation® brand and family of products and services. PlayStation has brought innovation to the market since the launch of the original PlayStation in Japan in 1994. The PlayStation family of products and services includes PlayStation®4, PlayStation®VR, PlayStation®Vita, PlayStation®3, PlayStation™ Store, PlayStation®Plus, PlayStation ™ Video, PlayStation ™ Music, PlayStation ™ Now, PlayStation ™ Vue and the acclaimed PlayStation software titles from SIE Worldwide Studios.

Based in San Mateo, California, SIE is a wholly owned subsidiary of Sony Corporation and has global functions in California, London and Tokyo. DUALSHOCK is the PlayStation analog controller, which is a variation of the existing analog controller developed by Sony Interactive Entertainment for PlayStation consoles. DUALSHOCK was introduced in Japan in late 1997 and launched in the United States in May 1998. It was initially introduced as a secondary peripheral for the original PlayStation, but then an updated version of the PlayStation console already included the controller. Later, Sony phased out the digital controller that was originally included with the console, as well as the dual analog controller.

DUALSHOCK was introduced in Japan in late 1997 and launched in the United States in May 1998. It was initially introduced as a secondary peripheral for the original PlayStation, but then an updated version of the PlayStation console already included the controller. Later, Sony phased out the digital controller that was originally included with the console, as well as the dual analog controller.

On September 11, 2017, Sony Interactive Entertainment LLC (“SIE”) applied in Paraguay for the registration as a three-dimensional trademark of the shape of the DUALSHOCK for the PlayStation 4, under Application No. 1767508 and 1767507, to protect the goods in classes 9 and 28, respectively.

First decision of the Trademark Office: rejection for being considered a generic sign

The Trademark Office of the National Directorate of Intellectual Property (DINAPI) rejected the applications on August 21, 2018, by Resolution No. 1592 issued for class 09, Record No. 1767508 and Resolution No. 1591 issued for class 28, Record No. 1767507, based on the following considerations:

Due to being included in the prohibitions of Article No. 2 of Trademark Law 1294/98, in its paragraphs c) and e). Which reject the registration of a sign consisting of a usual, necessary shape or that provides a functional advantage to the product applied and is a generic sign.

On November 1, 2018, the SIE filed an appeal for reconsideration with the Trademark Director regarding both files, claiming:

• That the three-dimensional shape of the control as applied for registration
  may not be considered as a usual, necessary shape or one that grants a
  functional advantage to the product, let alone as a generic sign.
• The trademark is distinctive, has particular characteristics that enable it to
  be fully identified with SONY and its trademark PLAYSTATION, registered
  trademarks of SIE.
• It is different from any other shape of controller that may be found in the
  market.

Confirmation of the rejection by the Trademark Office

The Trademark Office confirmed the rejection on December 13, 2018.

Therefore, on December 14, 2018, the SIE filed an appeal against the rejection resolutions in order for the case to be reviewed by the General Directorate of Industrial Property in a second administrative instance.

Grounds and evidence submitted by sie to support the appeal

On April 12, 2019, SIE filed an appeal against Resolutions No. 1591 and 1592, and subsequently voiced grievances based on the following grounds:

• The trademark applied for has the distinctive character required to be protected as a three-dimensional trademark considering the essential and particular shape and characteristics that are representative of both SIE and the PlayStation.
• The shape of the product is completely different from other products in the market from different competitors, which were not even opposed by third parties at the corresponding stage.
• The shape of DUALSHOCK is clearly and unquestionably associated with the PlayStation and Sony brand, as verified by a market survey conducted among consumers in Paraguay.
• The sign requested to be protected is not conceived as a necessary shape, since the characteristic shape was modified in the course of time, and for each PlayStation console a variation of the shape was given, preserving the peculiar characteristics, which were also protected under trademark registration in the world, including in the same DINAPI.
• The shape neither provides a functional or technical advantage to the product since the only aspect to be protected is the aesthetic component, the way in which the elements that compose it are distributed and that render it distinctive like any other type of traditional brand.

Key evidence: market survey

SIE proved to have acquired rights over the shape of its product both in its country of origin and in other jurisdictions, including Paraguay, which had not only granted the shape of the DUALSHOCK used for all versions of the PlayStation console. Likewise, the notorious character of the same as a result of the considerable effort to position it in the market.

Nevertheless, a key piece of evidence that enabled the reverse of the rejection was the brand recognition research that was carried out by a team of well-known researchers in the field, where the degree of distinctiveness and notoriety of SIE’s three-dimensional brand was demonstrated.

A total of 302 people was interviewed and more than half of them spontaneously (direct response from the interviewee) associated the shape of the product with the SONY and PLAYSTATION brands. Also 9 out of 10 interviewees associated the shape of the product with the brand PLAYSTATION 4, without a doubt about the origin of the product.

Favorable ruling: the general director revokes rejection and orders granting of registration

On September 2, 2020, the General Directorate of Industrial Property revoked the rejections; and, consequently, ordered that the registration procedures be continued, based on the following considerations:

“That, regarding the prohibition set forth in Article 2 e), in accordance with the applicant’s expressions in its brief of grievances, it is understood that it does not fall within said prohibition, since we note that the sign applied for does not contain a word element, but rather is composed of a figurative element [...] but rather is a figure specifically designed and created by experts in order to generate totally innovative ways for players to play with the PlayStation 4 [...]”.

[…] the registration of the trademark is appropriate since, as mentioned, it does not constitute a generic designation for the class applied for, nor can it mislead or deceive the consumer, due to the fact that the figure whose registration is applied for has sufficient elements which distinguish it from the other products offered in the market, in accordance with the market study presented ... therefore, it is concluded that the trademark applied for does not generate a likelihood of confusion in the mind of the consumer.

In that sense, the trademark applied for is a trademark with a certain personality that allows it to be distinguished from others and to identify a product, line of products or the set of products that are produced by the same company.

The application in question is also sufficiently differentiated so that consumers are not confused when purchasing the product, and the rights of other trademark owners are not affected.

Conclusions

SIE demonstrated the distinctive nature of its trademark which enables it to access to the requested registration protection.

Such protection is not limited to the concepts of possessing the usual shapes of a product or its packaging, the necessary shapes of the product or service in question, or those that provide a functional or technical advantage to the product or service to which they are applied; nor is it limited to the concepts of generic or descriptive, and therefore it is not subject to the prohibitions established in Article 2, paragraphs c) and e) of the Trademark Law 1,294/98. On the contrary, the trademark is distinctive, as it has been recognized by the Intellectual Property authorities of different countries in the world, which in this sense have allowed the trademark to be registered.

Moreover, the trademark not only manages to identify SIE’s products due to the link generated in the consumer of the business sign-origin, but also its identity has been positioned with an impetus and relevance that makes it widely recognized in the market.