A dispute in a letter. Scrabble letter

Mattel the maker of the US version of the popular board game Scrabble has been thwarted in its bid to protect its popular tile letters from being imitated.

Mattel and Zynga Inc had been locked in a trade mark infringement dispute. Mattel claimed that Zynga had infringed their trade mark through their smartphone and digital game Scramble with Friends.

Mattel has accused Zynga of infringing four trade marks. This article focuses on one of the four alleged infringements. The trade mark in question (UK no. 2154349) is described as “a 3d ivory-coloured tile with a letter of the Roman alphabet and a number from one to ten on the top”. This trade mark was registered in three classes one of which was under class 9 for computer game adaptations of board games.

Last year Mattel took the case to the High Court.

Zynga then sought a summary judgement to have the trade mark invalidated on the grounds that the specifications for the mark was too broad. Zynga was successful and the summary judgement was upheld.

In his Jjudgement at the High Court, Mr Justice Arnold accepted the argument of Zynga and stated that “the trade mark was invalid as it did dnot comply with Article 2 of directive 2008/95/EC.

Article 2 of directive 2008/95/EC dictates that a trade mark “may consist of any signs capable of being represented graphically…”.

In his judgement Arnold further stated that “ the trade mark mark 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 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 then sought to quash the first instance decision that the ’tile mark’ was not a valid trade mark mark.

The appeal however was thrown out. Mummery LJ agreed with the earlier decision and ruled that all correct procedures had been followed. Further there was “absolutely nothing wrong either in law or in fact” with the earlier decision at first instance by Mr Justice Arnold.

The case will now deal with the remaining three trade marks marks.

This article was written by work experience student Fozia Cheychi

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