Court strikes down 3D ‘Scrabble tile’ mark

United Kingdom

In J W Spear & Sons Ltd v Zynga ([2012] EWHC 3345 (Ch), November 28 2012), Mr Justice Arnold, in the High Court of England and Wales, has held that Mattel Inc's three-dimensional ‘Scrabble tile’ UK trademark registration was invalid under Article 2 of the EU Trademarks Directive (2008/95/EC).

According to the judge, the registered mark - described as consisting of "a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10" - was not a sign; neither was it capable of being represented graphically. He concluded:

"...the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number on 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, that is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage."

In addition, he judge held that:

"... the representation is not clear, precise, intelligible or objective. ... [It] covers a multitude of different combinations. It does not permit the average consumer to perceive any specific sign. Nor does it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it is very broad."

The judge's decision, on an application for summary judgment on part of a counterclaim by the defendant Zynga, does not resolve the entire dispute between the parties: infringement claims remain outstanding in respect of three other marks - although the early invalidity in these proceedings will result in saved costs at the trial where there will now be no investigation as to whether the tile mark had acquired a distinctive character.

Jeremy Phillips, IP consultant to Olswang LLP, London

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