A recent High Court judgment concerning the Scrabble ‘tile’ trademark highlights the tension between trademarks and the functional elements of toys and games. Below is part two of a two-part summary of a few key decisions in this area; claims with varying degrees of success. Part one was published on 27 May (see tinyurl.com/pcd4kk2).
Hasbro v 123 Nährmittel  EWHC 199 (Ch)
Hasbro owned the well-known ‘PLAY-DOH’ brand, and held a community trademark and several UK trademarks for the name in relation to ‘modelling compounds’. 123 Nährmittel produced an alternative edible product, in contrast to Hasbro’s product which was not intended to be eaten. It was branded in the UK as ‘YUMMY DOUGH - the edible play dough!’. The packaging also described the product as ‘EDIBLE PLAY DOUGH MIX’. The parties held initial discussions as to how they might do business together, but nothing came of it and Hasbro objected to Nährmittel’s use of the words ‘PLAY DOUGH’. In response, Nährmittel claimed that Hasbro’s trademark was invalid, or that it had a defence to infringement because the words were merely descriptive.
On the evidence, there appeared to be some generic use of the term ‘PLAY DOUGH’ referring to the category of product. However, this was limited to home-made versions and most, if not all, of Hasbro’s competitors steered clear of the term. In any event, the court found that there was no requirement that the mark be exclusively associated with one undertaking – it was sufficient if only a proportion of the public regarded the mark as distinctive (although that would be assessed case by case). Furthermore, the fact that the mark ‘PLAY-DOH’ comprises two words which are, or are similar to, descriptive terms is only one of several factors to consider. The court also considered the market share, the intensity and length of the mark’s use, and the amount of investment in promoting it. On this basis, the court held that ‘PLAY-DOH’ was sufficiently distinctive and dismissed Nährmittel’s invalidity claim.
As regards infringement, the words ‘PLAY DOUGH’ and ‘PLAY-DOH’ are phonetically identical and visually similar. Considering ‘PLAY-DOH’ is a household name, the court held that there was a likelihood of confusion. The court agreed with Hasbro that the use of the words ‘PLAY DOUGH’ in the phrase ‘YUMMY DOUGH – the edible play dough!’ was not necessary to describe the nature of the goods, and so the defence failed. A significant class of consumers would see the use of those words as an extension of the brand name. The court also felt that Nährmittel had not met the proviso to that defence by acting ‘in accordance with honest practices in industrial or commercial matters’, bearing in mind the initial discussions between the companies and the fact that members of the Nährmittel team had admitted that the name was too close to ‘PLAY-DOH’.
JW Spear and Mattel v Zynga  EWHC 3345 (Ch)
The most recent case concerned Mattel’s Scrabble board game, and in particular its UK trademark for the shape of the letter tile (the ‘tile-mark’). The registration consisted of side, plan and perspective views of the tile, together with the description: ‘The mark consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10.’
Zynga, a maker of games for social media, developed a game called ‘SCRAMBLE WITH FRIENDS’, which incorporated a similar tile to the tile-mark. Mattel objected (it also claimed infringement of other trademarks which were not material to this decision). Among other things, Zynga counterclaimed that the tile-mark was not a sign capable of distinguishing Mattel’s goods or services and therefore not registrable as a trademark. This decision concerned Zynga’s application for summary judgment on that counterclaim.
There are three conditions to be met in this context: (1) the subject matter must be an identifiable ‘sign’, and not merely a concept; (2) it must be capable of being represented graphically, so that the authorities and third parties can understand precisely what it is that is protected by the registration; and (3) it must be capable of distinguishing the goods or services of one undertaking from another, as this is ultimately a trademark’s purpose.
Zynga argued that the tile-mark did not meet the first or second condition. It covered an infinite number of permutations of positions and combinations of letter and number; the precise size and shape of the tile was uncertain; and the colour ‘ivory’ was ambiguous (it did not, for example, refer to a recognised colour code). Mattel argued that each of the conditions were inter-related, and a finding that the tile-mark was distinctive (meeting the third condition) would support positive findings on the first and second conditions. At least for the purposes of this summary judgment application, Mattel had a realistic prospect of establishing acquired distinctiveness, and so Mattel said the application should be dismissed.
The court held that the distinctiveness of a mark had no bearing on whether it was in fact a sign capable of being represented graphically. Even so, in this case Mattel would have to prove acquired distinctiveness across the whole breadth of the tile-mark. The court agreed with Zynga that there were an infinite number of permutations of which the tile-mark could comprise, and so doubted such a broad exercise would be possible.
Given the many permutations, it was held that the tile-mark was not a ‘sign’, but ‘a mere property of the goods’ and furthermore was not sufficiently precise to allow others to perceive what it covered. The tile-mark therefore fell foul of the first and second conditions and Zynga’s summary judgment was granted.
Jim McDonnell, DLA Piper