J.W. Spear & Son Limited and others v Zynga Inc [2013] EWCA Civ 1175
On 4 October 2013 the Court of Appeal (Lord Justice Lewison, Sir John Mummery and Sir Timothy Lloyd) handed down judgment on the appeal brought by the proprietors of the board game SCRABBLE against the decision of Mr Justice Arnold invalidating their UK trade mark registration number 2154349 (the 'Tile Mark').
In 2000 J.W. Spear & Son Ltd succeeded in obtaining registration of the Tile Mark, which consisted of an ivory-coloured three-dimensional tile of indeterminate size with a letter (a to z, upper or lower case) and a numeral (1 to 10) somewhere on its upper face: [http://www.ipo.gov.uk/trademark/image/GB50001100002154349.jpg]
J.W. Spear and its parent Mattel Inc. ('Spear') brought an action against Zynga Inc ('Zynga') alleging infringement of a number of trade marks including the Tile Mark. Zynga counterclaimed, seeking to invalidate the Tile Mark, and successfully applied for summary judgment on this aspect before Mr Justice Arnold in late 2012.
Spear appealed to the Court of Appeal and the case was heard together with a separate appeal Cadbury v Nestlé concerning the trade mark registrability of the colour purple.
The argument centred around the first two of the three conditions required by Article 2 of the Trade Marks Directive (European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version): was the Tile Mark (i) a sign (ii) capable of being represented graphically?
Spear contended that summary judgment should not have been granted because it intended to prove at trial that the mark had acquired a distinctive character i.e. the average consumer would recognise some or all of the different permutations of the registration as being a SCRABBLE tile.
Zynga argued that no amount of proof of distinctive character would assist Spear, as the mark 'fell at the first hurdle' for failure to satisfy the first two fundamental requirements under Article 2: the Tile Mark was not a single 'sign' capable of being represented graphically. Zynga observed that Spear was attempting to make a trade mark do the job of a patent, seeking to obtain a perpetual monopoly over an enormous variety of permutations and combinations, including the following:
Sir John Mummery delivered the leading judgment. He rejected Spear's arguments and upheld the summary judgment ordered below. At paragraph 32 he concluded:
" ... There is no point in spinning it out:-
i) The Tile Mark is not "a sign" as required by the first condition of Article 2. It potentially covers many signs achievable by numerous permutations, presentations and combinations of the subject matter of the registrations.
ii) There is no graphic representation of a sign as required by the second condition of Article 2 that meets the requirements of clarity, precision and objectivity."
Spear has applied for permission to appeal to the Supreme Court.
Philip Roberts appeared at the appeal hearing for Zynga, led by James Mellor QC and instructed by Olswang LLP.