Scrabble trademark appeal thrown out
The maker of board game Scrabble, which is locked in a trademark infringement dispute with a rival games company, has lost an appeal against a decision which ruled one of its trademarks invalid.
Issuing a ruling on October 4, Sir John Mummery dismissed Mattel’s appeal against an earlier ruling which invalidated its trademark relating to the appearance of the game’s playing tiles.
Mattel, which makes the US version of the word game, said that Zynga Inc had infringed on the trademark through its smartphone and digital game Scramble with Friends.
According to its description, the trademark, UK No. 2154349, one of four trademarks which Mattel had accused Zynga of infringing, consisted of a “3d ivory-coloured tile with a letter of the Roman alphabet and a number from 1 to ten on the top.”
It was registered in three classes including under class 9 for computer game adaptations of board games.
Mattel took the case to the High Court in November last year.
However, seeking a summary judgement on the grounds that the specification for the mark was too broad, Zynga successfully claimed for the trademark’s revocation.
Making his judgement at the High Court, Mr Justice Arnold accepted Zynga’s argument, adding that the trademark was invalid as it did not comply with Article 2 of directive 2008/95/EC.
According to article 2 of the agreement, a trademark, “may consist of any signs capable of being represented graphically …”
Arnold wrote: “… it [the trademark] 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."
Mattel’s appeal claimed Arnold was wrong to rule that the trademark was not a sign which could be graphically represented.
However, throwing out the appeal, Mummery ruled that correct procedures had been followed and that there was “absolutely nothing wrong, either in law or in fact,” with Judge Arnold’s decision.
The ruling bares similarity to that of the Societé des Produits Nestlé SA v. Cadbury UK Limited case, the judgement for which was released on the same day.
The court rejected Cadbury’s application for a purple trademark, to which Nestle opposed, ruling that it was for multiple signs “which are neither graphically represented nor described with any certainty or precision, or at all.”
The Scrabble case will now centre around the remaining three trademarks.
