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 one of a two-part summary of a few key decisions in this area, which have shown varying degrees of success.
Electrocoin v Coinworld  EWHC 1498 (Ch)
Electrocoin and Coinworld each manufactured ‘amusement with prizes’ game machines (‘fruit machines’ as they are sometimes known). Electrocoin owned various UK and community trademarks for ‘BAR-X’ and ‘OXO’, registered in respect of ‘game, entertainment, recreational and amusement machines’.
Coinworld marketed a range of fruit machines with three reels, each displaying selections of a bear’s face (mirroring the branding of the particular fruit machine), ‘BAR’, ‘O’ and ‘X’. The final position of each reel could lead to various results according to the permutations available. These included ‘O-X-O’ (the first and third reel showing ‘O’ and the second reel ‘X’), and ‘BAR-X’ (in the first and second reel, or in the second and third reel). As is common with fruit machines, the possible winning results, and the corresponding prizes, were listed in a ‘win-table’ on the front of the machine. In this instance, the table included one row listing ‘BAR-BAR-BAR’, and the row immediately below it listing ‘X-X-X’.
Electrocoin objected that the reels placed in the particular positions described above, and the win-table listing the word ‘BAR’ immediately above the letter ‘X’, infringed its trademarks. The claim was dismissed. It was clear that the individual selections of ‘BAR’, ‘X’ and ‘O’ were fairly common in machines of this type, and their use on the reels was not intended to distinguish Coinworld’s machines from others. They merely indicate a winning, or losing, combination.
Furthermore, each permutation is just one of several randomised events, and the court did not consider this sufficient to be regarded as a ‘sign’ for the purposes of trademark law. As regards the win-tables, the court held that the lists were intended to be read from left to right and line by line as ‘BAR-BAR-BAR = £’ followed by ‘X-X-X = £’. It was contrived to suggest that anyone would read them vertically as ‘BAR-X, BAR-X, BAR-X’, and even less so as an indication of trade origin.
Adam Opel AG v Autec (Case C-48/05)  ETMR 33
Autec manufactured scale-model toy cars. Its range included a scale-model of Opel’s Astra V8 coupe which, being a faithful replica of the original, incorporated Opel’s ‘Blitz’ logo (a flash of lightning overlapping a circle) on the radiator grille. Opel had the trademark registered in Germany in respect of ‘motor vehicles’ and ‘toys’, and objected to its use by Autec. The European Court of Justice (ECJ) was asked to confirm whether this was use ‘as a trademark’ for infringement purposes, and whether it was an indication of the kind or quality of the goods in question such that Autec may have a defence to such infringement.
It was clear that Autec used an identical mark (the logo) in relation to goods which were identical to those for which the trademark was registered (toys). The ECJ referred to previous case law (Arsenal FC (Case C-206/01)) and Anheuser-Busch (Case C-245/02)) to say that, despite this, there would be no infringement unless Autec’s use of the logo was liable to affect the essential functions of the trademark, including in particular the guarantee of origin.
As regards the defence, the ECJ held that the logo was not used on the toy as an indication of the kind or quality of the goods. Instead, it was merely an element in the faithful scale-model reproduction of the original car. On referral back to the German courts (Case I-ZR-88/08  ETMR 50), the Bundesgerichtshof held that there was no infringement because Autec’s use would not affect the functions of the trademark. Consumers regarded the inclusion of the logo on the model as a faithful reproduction of detail found on the original car, and not as a guarantee that the model originated from the car manufacturer.
Lego Juris v OHIM (Case C-48/09)  ETMR 63
This case concerned Lego’s community trademark for the well-known brick shape. A competitor, Mega Brands, applied to OHIM (the registry for community trademarks) for cancellation of the registration insofar as it related to ‘construction toys’. It based its application on several grounds, including the ground that the mark consisted exclusively of the shape of goods which is necessary to obtain a technical result. Mega Brands’ application was granted by OHIM, and successive appeals by Lego within OHIM and to the Court of First Instance were dismissed. Lego ultimately appealed to the ECJ.
The ECJ also dismissed the appeal, relying on its earlier decision in Philips v Remington (Case C-299/99)  2 WLR 294. It was clear that the essential features of the sign incorporated a technical solution. There were other non-technical features present (such as the red colour), but these were not essential to the mark and so could be disregarded. The existence of alternative technical solutions did not help Lego either.
The requirement that the technical features be ‘necessary’ was interpreted fairly broadly, and the particular technical solution in the Lego brick appeared to be the optimum choice. Therefore, it appeared to the court that the registration would merely extend Lego’s monopoly over the technical solution previously protected by its expired patents.
Jim McDonnell, DLA Piper