Scrabbling to keep your trade marks

A recent case in the High Court has provided useful clarification on the requirements for a trade mark to be validly registered.

In 2000, J.W. Spear & Sons Limited (then the owner of various intellectual property rights in the board game “Scrabble” and now a subsidiary of Mattel) registered a trade mark consisting 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 “Tile Mark”).

Another company, Zynga Inc, launched a digital game “Scramble” which led the Mattel Group to allege that Zynga were infringing a number of their UK registered trade marks including in relation to the Tile Mark. Zynga then applied for a declaration that the Tile Mark registration was invalid as it did not comply with the statutory definition of a trade mark.

Essentially, to be capable of registration as a trade mark the “subject matter” of an application must satisfy three conditions:

1. It must be a sign;
2. That sign must be capable of being represented graphically; and
3. The sign must be capable of distinguishing the goods and services of one undertaking from those of other undertakings.

The Mattel Group attempted to argue that the subject matter of the Tile Mark had distinctive character and that this assisted them not only in showing that the third condition was met but that the first and second conditions were also met as they were inter-related conditions. The court rejected this argument based on case law and also noted it may not even have been possible to show distinctive character given that the Mattel Group would have had to “establish distinctive character across the breadth of the definition of the Tile Mark”.

The first condition

The court held that the Tile Mark did not constitute a sign as 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 …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 …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.”

The second condition

The well known case, Siekmann [2002], had held that for a sign to be capable of being represented graphically it had to be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

The court in the present case explained why, even if the Tile Mark had complied with the first condition, it would fail to comply with the second condition because “the representation is not clear, precise, intelligible or objective … 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.”

Conclusion

Clearly the court is not happy with such broadly defined trade mark registrations. If the Tile Mark had been more precisely and clearly defined then it may have been found to be valid. This serves as a stark reminder that trade mark registrations should be reviewed regularly, to ensure they are still valid given updates in the law, and new applications filed as necessary. If you wish to discuss any of the issues raised by this article please contact Simon Miles, on 020 7691 4000 or simon.miles@edwincoe.com.

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