Claimant companies owners of intellectual property in game of Scrabble – Defendant company exploiting digital game with similar name

JW Spear & Son Ltd and others v Zynga Inc: Court of Appeal, Civil Division: 4 October 2013

The claimants (Mattel) owned a registered trademark (the tile mark) associated with the popular board game ‘scrabble’. The description of the tile mark was that it consisted of a three-dimensional ivory-coloured tile on the top surface of which was shown a letter of the Roman alphabet and a numeral in the range one to 10. The tile mark was registered in respect of, inter alia, ‘computer game adaptations of board games’ in Class 9. Mattel alleged infringement of the tile mark by the defendant (Zynga) in connection with the exploitation of a digital game ‘scramble with friends’.

Zynga counterclaimed for revocation of the tile mark. It objected to the tiled mark on the ground that it was not ‘a sign’ capable of graphic representation on account of the large variety of representations encompassed by it. It then, successfully, applied for summary judgment on the counterclaim. The judge declared that the registration of the tile mark was invalid as it did not comply with article 2 of Parliament and Council Directive (EC) 2008/95 (the Directive) (to approximate the laws of the member states relating to trademarks). Mattel appealed.

They submitted that the judge had been wrong to decide summarily that the distinctiveness of the tile mark had been irrelevant in determining whether the first two conditions of article 2 of the Directive were satisfied, namely the requirement of ‘a sign’ and the requirement that a sign was capable of ‘graphic representation’ (the third condition being that of distinctiveness).

The appeal would be dismissed.

In the instant proceedings, there had been no error by the judge. He had not misapplied the law to the facts. The tile mark was not ‘a sign’ as required by article 2 of the Directive. It potentially covered many signs achievable by numerous permutations, presentations and combinations of the subject matter of the registrations. Further, there was no graphic representation of a sign as required by the second condition of article 2 that met the requirements of clarity, precision and objectivity (see [32], [33], [36], [37] of the judgment).

Sieckmann v Deutsches Patent-und Markenamt: C-273/00 [2004] All ER (EC) 253 considered; Libertel Groep BV v Benelux-Merkenbureau: C-104/01 [2004] IP & T 187 considered; Heidelberger Bauchemie GmbH: C-49/02 [2004] All ER (D) 268 (Jun) considered; Dyson Ltd v Registrar of Trade Marks: C-321/03 [2007] IP & T 550 considered.

Decision of Arnold J [2012] All ER (D) 326 (Nov) affirmed.

Michael Silverleaf QC and Jeremy Heald (instructed by Bird & Bird LLP) for Mattel; James Mellor QC and Philip Roberts (instructed by Olswang LLP) for Zynga.