On the Tiles - the Court of Appeal's Judgment in Spear and Others v Zynga

S.1 (1) of the Trade Marks Act 1994, which implements art 2 of Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, defines a trade mark as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."  If you are new to trade mark law or wish to be refreshed on the basics take a decko at "Introduction to Trade Marks" in our IP South East blog of 9 Oct 2013.

As I mentioned in "The Colour Purple - Société Des Produits Nestlé S.A. v Cadbury UK Ltd." 4 Oct 2013 the above words have been considered by the Court of Justice of the European Union in Case C-104/01, Libertel Groep BV and Benelux-Merkenbureau [2004] Ch 83, [2004] 2 WLR 1081, [2003] EUECJ C-104/01, Case C-273/00 Sieckmann v. Deutsche Patent –und Markenamnt [2002] ECR 1-11754, Case C-49/02 Heidelberger Bauchemie GmbH v. Bundespatentgerich ECR 1-6129 and C-321/03 Dyson v. Registrar of Trade Marks ECR 1-687.  As Mr. Justice Arnold said at paragraph [11] of his judgment in  J W Spear & Sons Ltd and Others v Zynga, Inc [2012] EWHC 3345 (Ch) (28 Nov 2012):

"The case law of the Court of Justice of the European Union establishes that, in order to comply with Article 2, the subject matter of an application or registration must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. See Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I at [23], Case C-49/02 Heidelberger Bauchemie GmbH [2004] ECR I-6129 at [22] and Case C-321/03 Dyson v Registrar of Trade Marks [2007] ECR I-687 at [28]. It is clear that these conditions are cumulative.

The questions "What is a sign?", "What is meant by 'capable of being represented graphically'?" and "Is the sign capable of distinguishing the goods or services of one undertaking from those of other undertakings?" which arose in Cadbury's attempt to register Pantone 2685C as a trade mark also arose in Spear and Others v Zynga.

J W Spear & Sons Ltd, which is a member of the Mattel group ("Mattel"), had registered the above sign as a trade mark for  "computer game adaptations of board games" in Class 9, "board games" in Class 28 and "organisation of competitions and exhibitions, all relating to board games" in Class 41 with effect from the 23 Dec 1997.   Zynga marketed a digital game that was called either SCRAMBLE or SCRAMBLE WITH FRIENDS. Mattel sued Zynga for infringement of the above trade mark.  Zynga counterclaimed for invalidation and applied for summary judgment on its counterclaim.  Giving judgment for Zynga, Mr. Justice Arnold concluded at paragraph [49] that the above trade mark did not satisfy the conditions of art 2 of the Directive and Mattel had no real prospect of successfully arguing to the contrary.

Mattel appealed and Lord Justice Lewison ordered the appeal to be heard with the appeal against Judge Birss QC's judgment in Société Des Produits Nestlé S.A. v Cadbury UK Ltd [2012] EWHC 2637 (Ch).   As some of the general points of the Court's judgment in Zynga were the same as in Cadbury the judgment in Zynga is quite short.

Dismissing the appeal Sir John Mummery said at paragraph [35] of his judgment in J W Spear & Son Ltd & Others v Zynga Inc [2013] EWCA Civ 1175 (04 October 2013) that "there was absolutely nothing wrong, either in law or in fact, with the judge's reasons, his conclusions, or his order" and that there was no advantage in further repetition of the reasoning contained in a judgment, which he would affirm without reservation.  Sir Timothy Lloyd and Lord Justice Lewison agreed.

As to that reasoning, Mr. Justice Arnold had decided at paragraph [47] of his judgment that the above trade mark was not a sign because

"the Tile Mark 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."

He decided at paragraph [48] that:

"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."

It appears from paragraph [31] of Sir John's judgment that Mattel's counsel did not argue with Mr Justice Arnold's analysis of the legislation or case law or the applicable principles and test for summary judgment. Mattel's complaint was that the judge misapplied the law stated by him to the facts found by him.

The Court of Appeal's judgment might have been more impressive had Sir John Mummery and the judges who agreed with him not confused revocation with invalidation. These are completely different concepts governed by different sections of the Trade Marks Act 1994: revocation by s.46 and invalidity by s.47. The counterclaim was for invalidation of the trade mark under s.47 (1) yet Sir John said at paragraph [2]:

"In the infringement proceedings Zynga counterclaims for revocation of the Tile Mark. On 26 October 2012 Zynga applied for summary judgment on the counterclaim."

If I had made a howler like that I would have had my knuckles rapped by the judge or hearing officer - and rightly so.

If you want to comment on this or the Cadbury appeal or trade mark law generally, call me on 020 7404 5252 during office hours or use my contact form.  You can also tweet me, write on my wall or send me a message through G+, Linkedin or Xing.


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