JW Spear & Son Ltd & Ors v Zynga Inc

Registration under Article 2 of Directive 2008/95/EC requires a sign, a graphic representation of that sign, and capacity to distinguish goods or services. The first two requirements must be satisfied before distinctive character is considered.

Acquired distinctiveness cannot convert an indeterminate class of appearances into a single sign or supply the required clear, precise and objective graphic representation. A purported mark covering numerous permutations, presentations and combinations of a product feature may therefore be invalid without a trial on distinctiveness.

The claimants owned trade mark registration No 2154349 for a three-dimensional ivory-coloured tile bearing a Roman-alphabet letter and a numeral. They alleged that Zynga’s digital game infringed the registration. Zynga counterclaimed for revocation.

Arnold J granted Zynga summary judgment and declared the registration invalid under Article 2 of Directive 2008/95/EC: [2012] EWHC 3345 (Ch). The claimants appealed, contending that evidence of acquired distinctiveness was relevant to whether the subject matter was a sign capable of graphic representation and that the issue required a trial.

The central issue was whether the registration’s potentially wide range of tile appearances satisfied the first two Article 2 conditions.

1. Appeal dismissed. The court unanimously affirmed Arnold J’s declaration that the Tile Mark registration was invalid.

2. Article 2 of Directive 2008/95/EC imposed three cumulative conditions. The subject matter had to be a sign, that sign had to be capable of graphic representation, and it had to be capable of distinguishing one undertaking’s goods or services from those of another. The first two conditions had to be determined before the issue of distinctive character.

3. The registered description did not identify a single sign. It potentially extended to numerous signs produced by permutations, presentations and combinations of tiles, letters and numerals, without specifying the tile’s size or precisely specifying its colour. It was therefore a property or concept of the goods rather than a sign.

4. In any event, the description was not a graphic representation meeting the requirements of clarity, precision and objectivity. It covered a multitude of appearances and did not enable the average consumer to identify a specific sign, or enable authorities and competitors to determine the scope of protection.

5. Evidence that the mark had acquired distinctive character could not affect either defect. There was consequently no issue requiring trial on distinctiveness, and summary judgment was properly granted. The court affirmed the judge’s reasoning without qualification.

• Court of Appeal (Civil Division) Dismissed the claimants’ appeal and affirmed the invalidity declaration: [2013] EWCA Civ 1175.

• High Court, Chancery Division, Intellectual Property Arnold J granted summary judgment on Zynga’s counterclaim and declared the Tile Mark registration invalid under Article 2 of Directive 2008/95/EC: [2012] EWHC 3345 (Ch).