3-D Scrabble Tile: Not A Sign Capable Of Graphical Representation

No triple word score for Mattel's three-dimensional scrabble tile trade mark.

J W Spear & Sons Ltd v Zynga ([2012] 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.

Facts

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 Trademarks 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.

Decision

The judge upheld Zygna's contention. He considered that the Tile Mark was neither a sign, nor...