Court of Appeal confirms that Mattel's 'Scrabble tile' mark is invalid

The Court of Appeal has handed down its judgment in JW Spear & Sons Limited v Zynga Inc ([2013] EWCA Civ 1175, October 4 2013), with Sir John Mummery delivering the leading judgment. At issue was whether there was "a sign" registrable as a trademark in accordance with the requirements of Article 2 of the Trademarks Directive (2008/95/EC), as interpreted in the judgments of the Court of Justice of the European Union.

This case involved a challenge to the validity of Mattel's ‘tile’ trademark, which had been registered in association with the board game Scrabble. According to the verbal description, the mark consisted of a three-dimensional ivory tile which showed a letter of the Roman alphabet on the top of the tile and a numeral in the range 1 to 10. The size and precise colour of the tile was not specified.

Arnold J granted Zynga summary judgment in November 2012, finding that the registration of the tile mark was invalid as it did not comply with the first two requirements of Article 2 of the directive. Essentially, it was not a sign capable of graphic representation due to the large variety of representations encompassed within it (namely the possible breadth of letter/number combinations). Arnold J found that the mark was an attempt to "claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter or number combination".

Mattel's case on appeal was that the distinctiveness of the tile mark should be taken into account in the overall assessment for the purposes of Article 2 and the proper place for this assessment was at trial (not in a summary judgment hearing). Arnold J did not agree that the distinctive character of the mark (which Mattel intended to prove at trial) had any bearing on whether the first two elements of Article 2 were satisfied.

The key points of the Court of Appeal's decision were as follows:

• Mattel's appeal was dismissed. Arnold J was right to find that Mattel's mark was invalid as it did not satisfy the requirements of Article 2. It was not “a sign capable of conveying some message; it was many signs”.
• Arnold J's findings were re-iterated by the Court of Appeal, namely that the tile mark is not “a sign” as required under Article 2. The mark potentially covers many signs achievable by numerous permutations, presentations and combinations of the subject matter of the registration. Further, there is no graphic representation of a sign that meets the requirements of clarity, precision and objectivity.

Business impact:

• A trademark should not be seen to do the job of a patent by way of a potentially perpetual monopoly over a huge variety of different permutations, presentations and combinations. A sign will not be capable of graphic representation, if it encompasses a large variety of different representations or combinations.
• Precision is vital in the drafting of trademark applications and brand owners should ensure that the graphic representation of trademarks is clear and precise. If the application could cover different signs achievable by numerous permutations, presentations and combinations of the subject matter of the registration, the application or mark may fall foul of the requirements of Article 2.

Joel Smith and Sarah Burke, Herbert Smith Freehills LLP, London