J.w. Spear & Sons Ltd and Others v Zynga, Inc.
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr Justice Arnold |
| Judgment Date | 28 November 2012 |
| Neutral Citation | [2012] EWHC 3345 (Ch) |
| Docket Number | Case No: HC12B01387 |
| Court | Chancery Division |
| Date | 28 November 2012 |
[2012] EWHC 3345 (Ch)
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NL
The Hon Mr Justice Arnold
Case No: HC12B01387
Adrian Speck QC and Jeremy Heald (instructed by Bird & Bird LLP) for the Claimants
James Mellor QC and Ashton Chantrielle (instructed by Olswang LLP) for the Defendant
Hearing date: 16 November 2012
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Introduction
The First Claimant is the registered proprietor of United Kingdom Registered Trade Mark No. 2154349 ("the Tile Mark") registered in respect of "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 on 1 December 2000 with effect from 23 December 1997. The Tile Mark is represented as follows:
The Defendant ("Zynga") contends that the Tile Mark is invalidly registered since it does not comply with Article 2 of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) ("the Directive"). By the present application Zynga seeks summary judgment on that part of its counterclaim in these proceedings.
Background
The Claimants ("Mattel") are the owners of the intellectual property rights associated with the well-known game SCRABBLE outside the USA and Canada. Mattel contend that the exploitation by Zynga of a digital game called SCRAMBLE (according to Mattel) or SCRAMBLE WITH FRIENDS (according to Zynga) infringes four registered trade marks, of which the Tile Mark is one.
On 30 March 2012 Mattel commenced these proceedings and applied for an expedited trial. That application was refused by Henderson J on 4 May 2012 ( [2012] EWHC 1374 (Ch)). Henderson J gave directions for the conduct of the action, pursuant to which the trial has subsequently been fixed for 13 May 2013. On 22 May 2012 Zynga served its Defence and Counterclaim. On 22 June 2012 Mattel served Amended Particulars of Claim. On 2 July 2012 Zynga served an Amended Defence and Counterclaim. On 11 July 2012 Mattel served its Reply and Defence to Counterclaim.
On 27 September 2012 Mattel applied for permission to conduct three surveys each involving up to 500 respondents. The stimulus to be used in one of these surveys is a tile which Mattel contend has been made in accordance with a specification corresponding to the Tile Mark. Mattel requested that they should have from mid-October 2012 to 1 February 2013 to conduct, consider and disclose the results of the surveys. On 17 October 2012 Master Bragge granted Mattel the permission sought (he did not, of course, have the benefit of the recent decision of the Court of Appeal in Marks and Spencer plc v Interflora Inc [2012] EWCA Civ 1501).
On 18 October 2012 (i.e. the day after the hearing before Master Bragge) Zynga's solicitors wrote to Mattel's solicitors stating that Zynga intended to make the present application. The application was duly launched on 26 October 2012. Zynga says that the reason for making this application now, rather than leaving the issue to trial, is to avoid costs being wasted, in particular on the survey.
On 12 November 2012 Mattel served Re-Amended Particulars of Claim. Witness statements are due to be exchanged on 18 January 2013, save for those arising out of Mattel's surveys, which are due to be served on 1 March 2013. Experts' reports are due to be exchanged on 1 February 2013. The trial is currently estimated to last 4–5 days.
Principles applicable to summary judgment applications
There is no dispute about these. They were conveniently summarised by Lewison J (as he then was) in the contexts of defendants' applications in Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch) at [15]:
"As Ms Anderson QC rightly reminded me, the court must be careful before giving summary judgment on a claim. The correct approach on applications by defendants is, in my judgment, as follows:
i) The court must consider whether the claimant has a 'realistic' as opposed to a 'fanciful' prospect of success: Swain v Hillman [2001] 2 All ER 91;
ii) A 'realistic' claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v Patel [2003] EWCA Civ 472 at [8].
iii) In reaching its conclusion the court must not conduct a 'mini-trial': Swain v Hillman.
iv) This does not mean that the court must take at face value and without analysis everything that a claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents: ED & F Man Liquid Products v Patel at [10].
v) However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v Hammond (No 5) [2001] EWCA Civ 550.
vi) Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case: Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical Co 100 Ltd [2007] FSR 63.
vii) On the other hand it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it. The reason is quite simple: if the respondent's case is bad in law, he will in truth have no real prospect of succeeding on his claim or successfully defending the claim against him, as the case may be. Similarly, if the applicant's case is bad in law, the sooner that is determined, the better. If it is possible to show by evidence that although material in the form of documents or oral evidence that would put the documents in another light is not currently before the court, such material is likely to exist and can be expected to be available at trial, it would be wrong to give summary judgment because there would be a real, as opposed to a fanciful, prospect of success. However, it is not enough simply to argue that the case should be allowed to go to trial because something may turn up which would have a bearing on the question of construction: ICI Chemicals & Polymers Ltd v TTE Training Ltd [2007] EWCA Civ 725."
This summary was cited with approval by Etherton LJ (with whom Sullivan LJ and Wilson LJ, as he then was, agreed) in AC Ward & Son v Catlin (Five) Ltd [2009] EWCA Civ 1098, [2010] Lloyds Rep IR 301 at [24].
The requirements of Article 2
Article 2 of the Directive provides:
"A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings."
Article 2 is implemented in the UK by section 1(1) of the Trade Marks Act 1994. Article 4 of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version) corresponds to Article 2 of the Directive.
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 first condition
In Case C-273/00 Sieckmann [2002] ECR I-11754 the CJEU held at [44]–[45] that the list of examples of signs in Article 2 is not exhaustive, and therefore a trade mark may consist of a sign which is not itself capable of being perceived visually, provided that it can be represented graphically. Accordingly, an odour is a sign. The same applies to sounds: see Case C-283/01 Shield Mark BV v Josst Kist h.o.d.n. Memex [2003] ECR I-14329 at [35]-[37].
The CJEU has also held that both (i) a single colour which is not spatially defined and (ii) a combination of colours which is not spatially delimited are capable of being a sign: see Libertel and Heidelberger Bauchemie.
In relation to a single colour, the CJEU said in Libertel at [27]:
"… a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on...
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