Can a mark which fails the basic "sign" and "graphic representation" requirements of Article 2 of the Trade Marks Directive 2008/95/EC be registrable if the trade mark owner can prove acquired distinctiveness? That is the question the Court of Appeal recently had to answer in a case concerning the validity of UK trade mark registration no. 2154349 for the Scrabble Tile Mark shape (the "Tile Mark").
J.W. Spear & Sons Limited owns the following UK 3D trade mark registration for its well known Scrabble tile piece covering "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.
Spear's and Mattel's claims against the defendant, Zynga, were for infringement of the Tile Mark in connection with their (Zynga's) digital game SCRAMBLE WITH FRIENDS. In the infringement proceedings, Zynga counterclaimed for revocation of the Tile Mark. Zynga applied for summary judgement on the counterclaim and was successful, see MakeYour Mark, Spring 2013, at pages 1 to 3 for a more detailed analysis of the High Court decision.
Spear and Mattel appealed on the grounds that the judge, Arnold J, was wrong to decide summarily that the distinctiveness of the Tile Mark was irrelevant in determining whether the first two conditions of Art 2 were satisfied i.e. the requirement to be "a sign" and the requirement that the sign be "capable of graphic representation".
Signs of which a trade mark may consist
A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishingthe goods or services of one undertaking from those of other undertakings.
The claimants argued that the acquired distinctiveness of the Tile Mark should have been taken into account at trial and this was not a case for summary judgment.
Zynga, perhaps not surprisingly, argued that the verbal description in the mark was vague and covered a number of different signs. Spear and Mattel were attempting to monopolise the concept of an ivory coloured 3D tile of indeterminate size with a letter and a numeral somewhere on its upper surface. Further, the distinctiveness or otherwise of the Tile Mark was irrelevant.
Zynga also argued that the “sign” and “graphic representation” requirements should not be mixed together into “one giant paella dish” which you had to taste to find out whether there was any distinctive character. These elements should be assessed objectively and separately for compliance with Art 2.
Dismissing the appeal, Sir John Mummery (with whom Lewison LJ and Sir Timothy Lloyd agreed), found that Arnold J had correctly applied the law.
Mummery found the claimants’ “paella” approach unappetizing, giving short shrift to their arguments. The Tile Mark was not a “sign”. It was potentially many signs achievable by numerous permutations, presentations and combinations. There was also no “graphic representation” that met the Sieckmann requirements of clarity, precision and objectivity.