JW Spear & Sons Ltd & Anor v Zynga, Inc

For registration under Article 2 of the Directive, the subject matter must cumulatively be a sign, be capable of graphical representation, and be capable of distinguishing the goods or services of one undertaking from those of others. Distinctiveness acquired through use cannot cure failure to satisfy the first or second conditions. A mark covering an infinite range of possible appearances, rather than a specific sign, may be merely a property of the goods and confer an unfair competitive advantage. Graphical representation must enable the sign and the scope of protection to be identified clearly, precisely, intelligibly and objectively. Summary judgment is appropriate where the issue is a short point of law and the claimant has no realistic prospect of establishing compliance at trial.

The claimants owned a United Kingdom registration for an ivory-coloured tile bearing any letter and number combination, used in connection with board games. In proceedings concerning an allegedly infringing digital game, Zynga counterclaimed that the registration was invalid because the mark did not comply with Article 2 of the Directive.

Zynga applied for summary judgment on that part of the counterclaim. The principal issues were whether the Tile Mark constituted a sign and whether its representation was sufficiently clear and precise. Mattel argued that acquired distinctiveness and actual use gave the mark sufficient definition. The court also considered whether the issue should await trial.

1. Summary judgment granted. The court applied the principles summarised in Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch). The court must assess whether there is a realistic, rather than fanciful, prospect of success, avoid a mini-trial, and consider evidence reasonably expected to be available at trial. Where the issue is a short point of law and the evidence is sufficient, the court should decide it without incurring the costs of a trial.
2. Article 2 imposes three cumulative conditions: the subject matter must be a sign, capable of graphical representation, and capable of distinguishing the goods or services of one undertaking from those of others. The first two conditions are not satisfied merely because the mark may have acquired distinctive character. The decision in Dyson v Registrar of Trade Marks Case C-321/03 demonstrates that a non-specific subject matter cannot be converted into a sign by evidence of distinctiveness.
3. The Tile Mark covered an infinite number of permutations of tile size, position, and letter and number combinations. It did not specify the tile’s size or precisely specify its colour. It therefore covered a multitude of different appearances and amounted to an attempt to obtain a perpetual monopoly over conceivable ivory-coloured tiles bearing any letter and number combination. It was a property of the goods, not a sign, and registration would confer an unfair competitive advantage.
4. Even if the first condition were satisfied, the second was not. The representation was not clear, precise, intelligible or objective. It did not allow consumers to perceive a specific sign or enable authorities and competitors to determine the scope of protection.
5. Mattel’s proposed factual investigation into acquired distinctiveness could not affect those conclusions. Mattel had no real prospect of successfully arguing that the Tile Mark complied with Article 2, and there was no compelling reason to defer the issue to trial.