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SONY PLAYSTATION DUALSHOCK 4: 3D trademark registration
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.