Scrabble 3D Tile Invalid: JW Spear and Mattel v Zynga
29 November 2012
The High Court of England and Wales has found the Scrabble 3D trade mark to be invalid in a trade mark invalidation action. In JW Spear & Sons Ltd and Mattel Inc v Zynga, Mr Justice Arnold in the Chancery Division of the Court found that Mattel’s Scrabble ‘tile’ did not comply with Article 2 of the Trade Mark Directive.
The registration, which dated from 2000, was registered in respect of ‘computer game adaptations of board games’ in Class 9, ‘board games’ in Class 28 and ‘organisation of competitions and exhibitions, all relating to board games’ in Class 41.
It was described as consisting of “a three dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10”.
Mattel claimed that Zynga had infringed four of its trade marks, one of which was the Scrabble ‘tile’.
Counterclaim and summary judgment
Zynga counterclaimed for the invalidity of the Tile mark on the basis that it was not registrable under Article 2 of the Trade Mark Directive. Zynga applied for, and were granted, summary judgment in the counterclaim. Zynga claimed that the reason for making this application, rather than leaving the issue to trial, was to avoid costs being wasted, in particular on the survey that was to be carried out by Mattel (which had applied for permission to do so) to provide evidence that the mark had acquired distinctive character through the use made of it.
Mr Justice Arnold held that the Scrabble tile mark was not a sign and was not capable of being represented graphically. Regarding the first condition of Article 2, he said:
As Zynga rightly contends, the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile. Furthermore, it does not specify the size of the tile. Nor is the colour precisely specified. In short, it covers a multitude of different appearances of tile. It thus amounts to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface. In my view that is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage.
Further, regarding the second condition of Article 2 he commented that:
Even if the Tile Mark complies with the first condition... the representation is not clear, precise, intelligible or objective. The representation covers a multitude of different combinations. It does not permit the average consumer to perceive any specific sign. Nor does it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it is very broad.
Mr Justice Arnold therefore found that the tile trade mark did not satisfy the conditions imposed by Article 2 of the directive. He summed up by referring to the Dyson case, confirming his agreement that the acquisition of distinctive character by the mark was not a necessary consideration where the mark did not comply with Article 2. Accordingly, it would not assist Mattel to show that the tile mark had acquired a distinctive character, even if that were possible.
This article was updated 24 December 2012