Scram Scrabble Tile: A tantalising tale of distinctiveness

This summary judgment is akin to a seven letter word with a double letter score for Q, landing on a triple word score square. It manages to mention, directly and indirectly, some of the most recent developments in trade mark case law, including survey evidence (as reported by the IPKat here), applications for expedited trials (see the IPKat here), the registrability of colours (again, of course, the IPKat here) and the specification of goods and services (one more time, here). In all these cases, in one form or another, the emphasis was context and the judgment in JW Spear & Sons Ltd & Others v Zynga, Inc [2012] EWHC 3345 (Ch) did not differ in that regard. The case concerned the fundamental issue of what a trade mark may consist of and whether distinctiveness was relevant to the representation requirements for trade mark applications or registration.

The facts

Mattel, owners of the intellectual property rights associated with SCRABBLE outside the USA and Canada, allege that Zynga's digital game SCRAMBLE (also known as SCRAMBLE WITH FRIENDS) infringes a few of its UK Registered Trade Marks. In the chronology of the litigation history so far, Mattel were refused an expedited trial in [2012] EWHC 1374 (Ch), but were granted permission to conduct three surveys, prior to the Court of Appeal's decision in Marks and Spencer plc v Interflora Inc, which [thankfully] moved the law away from an empirical approach to the average consumer test.

infinite permutations
conveniently exemplified

Zynga successfully applied for a summary judgment on the validity of one of the alleged infringed marks intended to be the subject of one of the surveys concerning distinctive character. The contested  mark was the three-dimensional ivory-coloured tile, well-known to all Scrabble players, which has a letter and a number from 1 to 10 on the top surface, for goods and services in Classes 9 (computer game adaptations of board games), 28 (board games) and 41 (organisation of competitions and exhibitions, all relating to board games). Zynga contended that the mark was invalidly registered contrary to Article 2, Directive 2008/95/EC on the ground that the tile mark covered an infinite number of permutations of different sizes, positions and combinations of letter and number.

The Law

Article 2 defines what signs may constitute a trade mark based on three cumulative conditions. First, it must be a sign, which is not limited to symbols such as logos or brand names; it may be a sound (see Case C-283/01 Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] ECR I-14329), an odour (see Case C-273/00 Sieckmann [2002] ECR I-11754) and colours not spatially defined (see Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I and Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-6129). Secondly, a sign must be capable of graphic representation in a way which is clear, precise, self-contained, easily accessible, intelligible, durable and objective (see Sieckmann). The Court of Justice of the European Union (CJEU) judgment in IP Translator was given a nod by the court as re-iterating the importance of clarity and precision. Thirdly, a sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. It was sufficient to note that a sign is only incapable of distinguishing the goods or services of one undertaking from those of other undertakings if it is incapable of distinguishing the former from the latter irrespective of the goods or services in relation to which it may be used (see Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-1619).

The issue was whether a successful demonstration of distinctive character not only satisfied the third condition but also assisted satisfying the first and second conditions.

The Judgment

It appeared that the reference to context in the Libertal and Heidelberger Bauchemie judgments meant that although a colour is capable of being a sign, therefore satisfying the first condition, it was necessary to establish that it could be represented as a sign in the context of the second condition. Birss's reasoning in Nestlé v Cadbury, based on the criteria laid down in those CJEU cases, did not support the proposition that a mark's distinctiveness was relevant to the first and second conditions. It was based on the criteria laid down in Libertal that the representation requirements could be satisfied either by including a description of the colour in words or by designating the colour using an internationally recognised identification code. As such, 'context' was found to mean the context of the application or registration and not the context in which the mark was actually used by the applicant or proprietor in trade:

'Since the context of the application or registration includes the goods or services in the application or registration, it includes the goods or service specified in the application or registration. The hearing officer in Nestlé v Cadbury gave a good example of this...namely that brown would not qualify as a sign in relation to chocolate because it is the natural colour of the goods.' (at [34]).

Further, in Dyson v Registrar of Trade Marks [2007] ECR I-687 the CJEU held that it was unnecessary to consider the issue of acquisition of distinctive character when the mark under dispute did not comply with Article 2. It would not, therefore, assist Mattel to show that the tile mark satisfied the first and second conditions by establishing that it had acquired a distinctive character.

Returning to the initial contention that the mark was invalidly registered contrary to Article 2, the court found that the tile did not satisfy either the first or second conditions:

'[it] 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.

Even if the Tile Mark complies with the first condition, in my judgment it does not comply with the second condition since the representation is not clear, precise, intelligible or objective. As discussed above, the representation 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.' (at [47]-[48])

So, has Christmas come early for trade mark case law enthusiasts and word game junkies? Not quite. The decision is only fifty paragraphs long and does not need to delve into the details of the recent judgments it cites. Although worthy of the Scrabble analogy in the introduction, the player's next go in the same imaginary game would include failing to look on the back of a tile assumed to be blank, only to discover that another vowel stares back on the reverse. If the combination of letter and number had been more precisely and clearly represented would Mattel be faced with the same result?

Then again, it nicely sets the tone for the trial, due to be held on 13th May 2013, where infringement of the word marks SCRAMBLE and SCRABBLE and the device mark SCRABBLE remains at issue. The judgment enforces the fundamental essential elements of a trade mark in a way which cannot be side-stepped by functions or characteristics. Although not an IP behemoth, in its unassuming way, this round of the Mattel litigation deals with the fundamental definition of what a trade mark may be, and limits it.