"A trade mark may consist of any sign capable of being represented graphically".
This requirement for trade mark registration under Section 1(1) of the Trade Marks Act 1994 may easily be overlooked since it is not an issue that requires much consideration in the vast majority of cases, which generally concern applications for word or device marks. However, when it comes to more unusual trade marks, such as colours, sounds and smells, careful consideration needs to be given to the way in which the mark is represented in the application – to ensure that the nature of the mark and the scope of protection sought are clear. Three-dimensional marks per se are not necessarily problematic because the graphic representation requirement may be met by submitting drawings showing the article from different angles, but difficulties arise when protection is sought for variations of a three-dimensional sign which are not visible in the application, as in J.W.Spear & Sons Limited, Mattel, Inc. and Mattel UK Limited ("Mattel") v Zynga, Inc., a case before the High Court concerning the validity of UK trade mark registration no 2154349 for a mark consisting of a tile piece ("the Tile mark") for use in the well-known board game, Scrabble.
J.W. Spear & Sons Limited, Mattel, Inc. and Mattel UK Limited are the owners of the intellectual property rights associated with the Scrabble game outside the USA and Canada.
Putting it Down on Paper
The entry for the Tile mark registration in the UK Trade Marks Register shows a representation of a tile piece from three different angles and also includes a written description of the mark, namely:
"The mark consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10".
The letter and numeral element of the sign are not displayed in the drawings for the mark on the register because the applicant did not wish the registration to be limited to one particular letter and numeral combination. Instead, the applicant relied on the written description of the mark to define the scope of protection.
However, in so doing, J.W. Spear & Sons laid themselves open to an attack for invalidity on the ground that the scope of protection was not clear to others inspecting the mark on the register. Sure enough, when Mattel sued Zynga, Inc. for infringement of its rights in the Tile mark, Zynga counterclaimed for invalidity on the ground that the Tile mark did not comply with Article 2 of the Directive (section 1(1) of the Trade Marks Act 1994) because it covered an infinite number of variations of different sizes, positions and combinations of letter and numeral, the precise shape of the tile was not defined and the specific colour was not identified.
Clear and Precise Definition of the Mark
In assessing the validity of the Tile mark registration, the Judge recited the Sieckmann criteria for graphic representation, emphasizing the requirement for precise identification of the sign so that it is clear to both the trade mark authorities and the public exactly what protection is claimed and subsequently granted. References were also made in the judgement to the Libertel, Shield Mark and Heidelberger decisions.
In Libertel, it was stated that in the case of an application for registration of a colour per se, a description of the colour in words or an indication of an internationally recognised identification code were ways in which the requirements could be met for a clear and precise representation of the mark. However, in the case of the Tile mark, the colour was not the only element of the mark that required clearer definition. The lack of precision concerning the letter and numeral combination element was akin to seeking protection for a sign comprising two or more colours juxtaposed without shape or contours and in every conceivable form. This type of sign was denounced in Heidelberger as being insufficiently precise and uniform to meet the requirements of Article 2 of the Directive.
Capacity to Distinguish and Distinctive Character – Are They Related?
In its defence, Spear/Mattel submitted that the three conditions of Article 2 of the Directive – namely i) a mark may consist of a sign, ii) the sign should be capable of being represented graphically and iii) the sign should be capable of distinguishing - are inter-related and that, in particular, evidence of distinctive character assists an applicant/ proprietor to show that the first two conditions are satisfied. The Judge disagreed and following Heidelberger concluded that the Tile mark did not meet the first two conditions of Article 2. With regard to the graphic representation requirement, he stated that the representation was "not clear, precise, intelligible or objective", it covered "a multitude of different combinations" and it did not allow the average consumer, the trade mark authorities or competitors to determine the scope of protection afforded to the proprietor.
Applicants of non-word/visual device marks should heed the warning to take care when applying for registration that their mark is properly represented and should not expect to bypass this requirement by demonstrating that the mark has acquired a high level of distinctiveness.
It is likely that the Tile mark registration would have been found valid if the registration had specified both the particular shade of ivory for the tile, e.g. by way of reference to a Pantone code, and if a particular letter and numeral combination had been specified for the surface element of the sign. Spear/Mattel obviously did not wish to limit their rights to a particular letter and numeral combination when they applied for registration of the Tile mark and the broad claim was not refused by the Intellectual Property Office when registration was granted in 2000. However, under the scrutiny of the High Court, the broad claim could not stand up and as a result of cases such as this one, applicants can no longer expect to obtain a registration for a mark for which thescope of protection claimed is not precisely defined by the graphic representation. Spear/Mattel might try to get around the problem by applying to register a series of marks comprising the same tile piece bearing different letter and numeral combinations. A registration in which a particular letter and numeral combination is specified or a series of tile marks could still arguably prevent the registration and use of another sign comprising a tile bearing a different letter and numeral combination, particularly if the registered mark has acquired distinctiveness and has achieved the level of recognition that the Scrabble Tile piece is likely to have acquired. However, in trying to maintain much broader rights, Spear/Mattel shot themselves in the foot because the scope of their registration was unclear and therefore the registration could not be deemed valid. This case serves as a warning to trade mark applicants who submit vague representations of their marks in an attempt to obtain broad rights. They can no longer expect the UK Intellectual Property Office to allow such broad claims.