In the UK High Court case J.W. Spear & Sons Limited & Ors v Zynga, Inc. Mattel alleged that Zynga’s board game ‘Scramble with friends’ infringed four of its trade mark registrations including one for a 3D image of a scrabble tile with a description that the mark consisted of a “three dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10.”
Following the infringement allegations, Zynga applied for the court to make a declaration that the scrabble tile registration was invalid as it did not comply with the statutory definition of a trade mark, namely, that it did not meet the following basic registration requirements that a trade mark
- must be a sign
- must be capable of being represented graphically
- must be capable of distinguishing one undertaking’s goods or services from another
With regard to the first criterion, the Judge, Mr Justice Arnold, held that due to the way the image of the scrabble tile was described, the trade mark was trying to cover an infinite number of possible permutations of the appearance of the tile, due to the large number of possible design combinations with differing size, style and positions of the letter and numeral combinations that could be used. Furthermore, neither the size nor colour of the tile was precisely described. Therefore, Mattel were trying to claim a monopoly on all ivory coloured tiles and if this were allowed, they would have an unfair competitive advantage.
Even if the mark had been seen as a sign, having regard to the second criterion the Judge held that the trade mark was not clear, precise, intelligible or objective and therefore did not satisfy the requirement for the mark to be graphically represented. It did not matter whether or not Mattel could show the mark had acquired a distinctive character through use after registration, as such evidence cannot be used to overcome an objection that the mark does not meet the basic registration requirements.
This case demonstrates the importance of regularly reviewing your trade mark rights to ensure your trade marks remain validly registered following changes in the law.