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An attempt by the makers of Scrabble to protect its iconic letter tiles from imitations by claiming trademark rights has been thrown out by the Court of Appeal.
The ruling, handed down by Lord Justices Lewison, Mummery and Lloyd earlier this month, marks a win for Olswang client Zynga, which had been locked in a bitter battle with Scrabble makers JW Spear & Son over use of the tiles.
Olswang IP partner Paul Stevens instructed 8 New Square’s James Mellor QC to respond to the case by JW Spear and its parent Mattel Inc, which wanted to quash a first instance ruling that the ‘tile mark’ was not a viable trademark.
That first instance ruling, handed down by Mr Justice Arnold, came in response to a summary judgment application from Zynga that had sought to have the trademark rendered invalid. The application followed a trademark infringment case against Zynga by JW Spear over the particular
This came after Mr Justice Arnold upheld a summary judgment application from Zynga against the claimants, which sought to have the trademark rendered invalid. Zynga had issued the application in response to a trademark infringement case against it by JW Spear over the particular tile mark trademark, which it had been granted in 2000.
Bird & Bird IP partner Phil Sherrell led the appeal for JW Spear instructing 11 South Square IP heavyweight Michael Silverleaf QC.
Arnold J said the attempt to enforce the trademark “mounts 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”.
The CoA agreed, Mummery LJ stated: “The tile mark is not “a sign” as required by the first condition of Article 2 [of a European trade mark Directive]. It potentially covers many signs achievable by numerous permutations, presentations and combinations of the subject matter of the registrations.”
The trademark battle was heard at the same time that as the CoA heard an attempt by Cadbury to trademark the iconic purple colour of its Dairy Milk bars (4 October 2013).
Mummery LJ said both Mattel and Cadbury had attempted to gain an unfair competitive advantage through trademarking.
Commenting on the case 3 New Square barrister Douglas Campbell said: “The Scrabble case was a clear one. The normal type of Scrabble tiles is familiar to anyone who has played the game, but the wording of the mark really does offer a raft of possibilities as to which letters, which numerals, and how they are represented.
“For instance Zynga’s lawyers showed some tiles with the well-known combinations 3M, O2, and F1 – all of which would be covered by this registration. What is more surprising is that the mark was invalidated at the summary judgment stage. The Scrabble proprietor was not even given the chance of a trial, to show that the public actually recognised its tiles as distinctive of Scrabble. But then, it was being greedy.”
The legal line-up
For the appellant Mattel, JW Spear and Sons and Mattel UK
11 South Square’s Michael Silverleaf QC led Three New Square’s Jeremy Heald instructed by Bird & Bird IP partner Phil Sherrell and associate Ewan Grist
For the respondents Zynga
Olswang IP partner Paul Stevens 8 New Square’s James Mellor QC and One Essex Court’s Philip Roberts