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  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 |
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  ECR I-14329), an odour (see Case C-273/00 Sieckmann  ECR I-11754) and colours not spatially defined (see Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau  ECR I and Case C-49/02 Heidelberger Bauchemie GmbH  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  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.
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 ).Further, in Dyson v Registrar of Trade Marks  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 -)
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.