JW Spear & Sons Ltd (Owners of the Scrabble mark) v Zynga Inc – 04 October 2013
Many of you may be familiar with the popular board game Scrabble, unfortunately for the UK owners the registration of the tile mark was revoked and last month an appeal against the revocation was rejected.
The scrabble trade mark consists of a three dimensional shape of a tile, the surface of the tile displays a letter from the English alphabet with a number from 1-10 in the bottom right hand corner. The trade mark was revoked because it was held that the mark was not a ‘sign capable of graphic representation’ within the meaning of the Trade Marks Directive (and section 1(1) of the UK Trade Marks Act 1994).
Scrabble claimed against Zynga (a producer of computer games) for trade mark infringement of the Scrabble mark based on Zyngas use of the mark ‘Scramble with Friends’ in relation to a digital game.
Zynga counterclaimed for revocation of Scrabble’s mark on the grounds that the registration of the Scrabble mark was invalid and succeeded!!!
Why? Surely the tile was capable of graphic representation?
To explain we need to look deeper into the meaning of what is meant by ‘capable of graphic representation’. The judge in the above case held that the mark was not a sign within the meaning of the relevant legislation as the mark covered “an infinite number of permutations of different sizes, positions and combinations of the letter and number on the tile”
The representation of the mark was not clear, precise, intelligible or objective (as required by legislation) because it covered a multitude of different combinations.
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