JW Spear & Son Ltd and Others v Zynga Inc.
| Jurisdiction | England & Wales |
| Judge | Sir John Mummery,Sir Timothy Lloyd,Lord Justice Lewison |
| Judgment Date | 04 October 2013 |
| Neutral Citation | [2013] EWCA Civ 1175 |
| Docket Number | Case No: A3/2013/0062 |
| Court | Court of Appeal (Civil Division) |
| Date | 04 October 2013 |
[2013] EWCA Civ 1175
Lord Justice Lewison
Sir John Mummery
and
Sir Timothy Lloyd
Case No: A3/2013/0062
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
THE HON MR JUSTICE ARNOLD
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Michael Silverleaf QC and Mr Jeremy Heald (instructed by Bird & Bird LLP) for the Appellants
Mr James Mellor QC and Mr Philip Roberts (instructed by Olswang LLP) for the Respondent
Hearing dates: 26 & 27 June 2013
Approved Judgment
Introduction
This action involves a challenge to the validity of a registered trade mark associated with the popular word game SCRABBLE. The trade mark is owned by the Mattel claimants (Mattel), along with other intellectual property rights. It is called "the Tile Mark" in this judgment, as it was in the court below.
Mattel's claims against the defendant Zynga Inc (Zynga) are for infringement of the Tile Mark in connection with the exploitation of a digital game SCRAMBLE WITH FRIENDS. In the infringement proceedings Zynga counterclaims for revocation of the Tile Mark. On 26 October 2012 Zynga applied for summary judgment on the counterclaim. It was successful.
This appeal by Mattel is from the summary judgment granted by Arnold J on 28 November 2012. He declared that the registration of the Tile Mark (UK Trade Mark Registration No. 2154349) was invalid, as it did not comply with Article 2 of the Directive 2008/95/EC of 22 October 2008 (the Directive).
The Tile Mark is 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, all being registered on 1 December 2000 with effect from 23 December 1997. According to the verbal description of the Tile Mark it consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10.
Broadly stated the debate is about whether the feature which is the subject of the registration was a simple property of the subject matter, as distinct from being "a sign" that satisfies the requirements of Article 2. The main ground of appeal is that the judge was wrong to decide summarily that the distinctiveness of the Tile Mark was irrelevant in determining whether the first two conditions of Article 2 are satisfied i.e. the requirement of "a sign" and the requirement that the sign is capable of "graphic representation."
It is common ground that the issue of the nature, scope and magnitude of the distinctiveness of the mark were all matters for trial. Mattel's central case on the appeal is that the distinctiveness of the Tile Mark in fact should be taken into account in the overall assessment for the purposes of the requirements of Article 2. That should be done at trial. Arnold J did it without a trial.
The alternative contention is that, if that submission is rejected, the interpretation of Article 2 is not acte clair against Mattel and that a reference to the Court of Justice of the European Union (CJEU) is necessary to resolve the issue. Mattel's preferred position at this stage is that it would rather have a trial to find all the facts relevant to all the requirements of Article 2 than a reference for a ruling on the interpretation of Article 2. If it turns out that a reference is necessary in order to decide the case at trial, that is the stage at which to make a reference.
In granting permission to appeal Lewison LJ gave a case management direction that the Tile Mark appeal be listed for hearing at the same time as the Cadbury "colour purple" appeal in Societé des Produits Nestlé SA v. Cadbury UK Limited [2012] EWHC 2637 (Ch) ( Cadbury). In both appeals there is an issue on whether there is "a sign" registrable as a trade mark in accordance with the requirements of Article 2, as interpreted in the judgments of the CJEU. Some of the general points that can be derived from those judgments are stated in paragraph 15 of the lead judgment in Cadbury and will not be set out again in this judgment.
Background facts
Mattel has other three dimensional trade mark registrations for game tiles used in SCRABBLE. They are not in issue on this appeal. The objection to the Tile Mark is principally made on the ground that it is not "a sign" capable of graphic representation on account of the large variety of representations encompassed by it. It is in substance, says Zynga, an attempt to make a trade mark do the job of a patent by way of a potentially perpetual monopoly over a huge variety of permutations, presentations and combinations, all of which would, if the registration were valid, potentially fall to be regarded as signs identical with the Tile Mark.
Law
The main points in the CJEU judgments cited by Arnold J are in paragraph 15 of the Cadbury judgment. The essence of the legal requirements is encapsulated in this short statement: in order to be capable of constituting a trade mark, the subject matter of any application must satisfy three conditions required by Article 2 of the Directive:-
"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…" ( Dyson)
Arnold J held that the Tile Mark did not satisfy the first two conditions. He also held that, in making the assessment whether there was a sign capable of being graphically represented, it was not relevant to consider the distinctiveness of the mark. Mattel disagrees with those rulings.
Having summarised the background to the case the judge stated the principles applicable to summary judgment applications, as set out in a valuable passage in the judgment of Lewison J in Easyair Ltd v. Opal Telecom Ltd [2009] EWHC 339 (Ch) at [15]. Arnold J then considered the requirements of Article 2 of the Directive, as interpreted in rulings of the CJEU cited by him and now distilled in paragraphs 14 and 15 of the lead judgment in Cadbury. He quoted key paragraphs from the judgments in Libertel, Heidelberger, Dyson and Sieckmann on the three conditions. He addressed the parties' arguments and then applied the law to determine the validity of the Tile Mark.
Arnold J's reasons for holding that the Tile Mark was invalid were that (a) it was not a sign; (b) it was not capable of being represented graphically; and (c) it was no answer to say, as Mattel did, that they intended to prove at trial that the Tile Mark had acquired a distinctive character. The judge firmly rejected Mattel's contention that distinctive character had a bearing on the question whether the first two conditions of Article 2 were satisfied. The contention had no real prospect of success at trial. It was without support in the authorities cited, down to and including the judgment of HHJ Birss QC appealed in Cadbury.
Turning to the first condition of "a sign" he stated the reasons for his conclusion:
"47. In my judgment the Tile Mark does not comply with the first condition for the following reasons. As Zynga rightly contends, 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."
As for the second condition of graphic representation he stated the following reasons for his conclusion:-
"48. Even if the Tile Mark complies...
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