In a decision of wide significance, the Court of Appeal has ruled invalid a trade mark that the makers of ‘Scrabble’ hoped would protect the household name board game from online rivals. The Court found that, regardless of the ‘distinctiveness’ of the tiles used in the game, they simply could not amount to ‘a sign’ capable of graphic representation, as required by European trade mark legislation.
The game’s manufacturers had registered what was described as a ‘Tile Mark’ in the form of a three-dimensional, ivory-coloured, tile on the top surface of which was shown a letter of the Roman alphabet and a numeral in the range one to 10. They subsequently launched infringement proceedings in respect of a popular online game which was promoted under the title ‘Scramble with Friends’.
In entering summary judgment against the manufacturers, the High Court found that the trade mark was invalid on the basis that the distinctiveness of the tile image and its connection with ‘Scrabble’ in the public mind was irrelevant. The Court found that the trade mark did not meet the conditions laid down by Directive 2008/95/EC in that it could not be viewed as ‘a sign’ that was capable of graphic representation.
In dismissing the manufacturers’ challenge to that ruling, the Court of Appeal found that the ‘Tile Mark’ was not ‘a sign’ within the meaning of the Directive in that it potentially covered many signs, achievable by numerous permutations, presentations and combinations of the subject matter of the registration.
Affirming the High Court’s decision ‘without reservation’, and refusing to refer the underlying issues for resolution by the European Court of Justice, the Court also found that there was no graphic representation of a sign that was capable of meeting the Directive’s requirements of clarity, precision and objectivity.
J.W. Spear & Son Limited & Ors v Zynga Inc. Case Number: A3/2013/0062