Scrabble trade mark invalid

Posted: 5th December 2012

A trade mark registered by the makers of ‘Scrabble’ in the form of a pictorial depiction of the ivory-coloured tiles used in the well-known board game is invalid due to its non-compliance with the requirements of European law or section 1(1) of the Trade Mark Act 1994, the High Court has ruled.

ScrabbleThe validity of the ‘Tile Mark’, which was registered by Mattel Inc. in respect of computer game adaptations of board games as well as organisation of online competitions and exhibitions relating to board games, was challenged by Zynga Inc. which markets a digital game called ‘Scramble’ or ‘Scramble With Friends’.

In ruling that the trade mark failed to comply with the conditions laid down by Article 2 of European Parliament and Council Directive 2008/95/EC – which was implemented in the United Kingdom by section 1(1) - the court ruled that the Tile Mark could not be viewed as a ‘sign capable of being represented graphically’.

Mr Justice Arnold said: ‘As Zynga rightly contends, the Tile Mark covers an infinite number of permutations of difference 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 an unfair competitive advantage.’

Even if the Tile Mark could viewed as a ‘sign’ within the meaning of the directive, the judge said that its representation lacked sufficient clarity and intelligible or objective precision to provide a basis for a valid trade mark. He concluded: ‘It does not permit the average consumer to perceive any specific design. Nor does it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it are very broad.’