snIPpets – January 2013
- Court of Appeal restricts the use of witness gathering exercises in trade mark infringement cases
- Warning for owners of trade marks with a "figurative figleaf of distinctiveness"
- Advocate General advises that registering a CTM should not be a defence to infringement
- 3-D Scrabble Tile: not a sign capable of graphic representation
- Use of a different form of trade mark can still be genuine use
- Yoghurt is Yoghurt
- China trade Mark Practice Note – Retail Services
- Extra-Time at the High Court
- English Court takes jurisdiction over another database infringement case
- The Informed User can have an imperfect recollection
- You don't own my email!
- English Court flexes its muscles on declarations of non-infringement
- Proposal to make clinical trials less risky and online drug sales safer
- Court of Appeal confirms invalidity of patent for EXELON because it was obvious to resolve racemate using standard techniques
Patents / Competition
- The MBE Course: Fieldfisher meets budding entrepreneurs
- What to watch out for in 2013
- Other News
No triple word score for Mattel's three-dimensional scrabble tile trade mark.
J W Spear & Sons Ltd v Zynga ( EWHC 3345 (Ch), November 28 2012
In the High Court of England and Wales, Mr Justice Arnold has held Mattel Inc's UK Registration for its three-dimensional "Scrabble Tile" to be invalid on the basis that it was not a sign, nor was it capable of graphical representation.
Relying on its various rights in the game SCRABBLE, Mattel (The Claimants) claimed that Zyna ("the Defendant") had infringed four of its registered trade marks, including its registration for a three-dimensional ivory-coloured tile with a number in the range of 1 to 10, together with a letter of the Roman alphabet inscribed on top, (the "Tile Mark").
The Tile mark 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. Zygna filed a counterclaim on the basis that the Tile Mark was invalid contrary to Article 2 of the EU Trade Marks Directive 2008/95.
In September 2012 Mattel applied for permission to conduct a series of surveys, one of which related to the distinctiveness of the Tile Mark. The following month, Zynga successfully applied for summary judgment on the validity of the Tile Mark with the rationale of avoiding wasted costs, specifically in relation to the proposed survey.
Zygna contested that the Tile Mark was invalidly registered contrary to Article 2 which defines what signs are capable of constituting a trade mark based on three cumulative conditions: (1) The subject matter of any application for registration must be a sign; (2) it must be capable of graphical representation in a way which is clear, precise, self-contained, easily accessible, intelligible, durable and objective; and (3) it must be capable of distinguishing goods and services of one undertaking from that of any other.
Zygna argued that the Tile Mark was invalid on the basis that it failed to satisfy the first two of these conditions. Mattel disagreed, contesting that the three conditions, as set out in Article 2, are inherently inter-related. Therefore the fact that the Tile Mark enjoyed such high levels of distinctiveness not only satisfied the third condition, but also went some way to fulfilling the first and second conditions.
The judge upheld Zygna's contention. He considered that the Tile Mark was neither a sign, nor was it capable of being represented graphically. He stated as follows:
"…the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number of 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, this is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage."
The judge concluded by confirming the judgment in the Dyson case; that distinctiveness acquired through use is not a consideration where a mark is unable to comply with the tri-part criterion of Article 2.
This case is a good example of the interplay between the three conditions of trade mark registerability. Here, the fact that the Scrabble Tile is renowned by the public as being distinct to Mattel does not overcome the fact that it is not sufficiently precise, clear, self-contained, accessible, intelligible, durable and objective. The judge was also very critical of Mattel trying to enforce too wide a monopoly on a vague trade mark registration. Mattel may have been more successful in arguing that the tile was a sign if it had been more particular in describing the specific configuration of Scrabble tile (eg its size and colour).
The case also serves as a helpful reminder for those defending trade mark infringement proceedings of how it can be a useful tactic to challenge inherent registrability of a non-conventional mark, even where that mark enjoys ample reputation and high levels of distinctiveness.
Mark Holah, Partner and Caroline Bass, trainee solicitor in the IP protection Group at Field Fisher Waterhouse LLP
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