Wednesday whimsies

On the tiles.  News has reached the IPKat's ears that that mighty and multitudinously litigious Mattel, owners of the SCRABBLE trade mark, have had a dramatic reverse with regard to its three-dimensional Scrabble tile UK trade mark registration. This occurred earlier today in the Chancery Division, England and Wales, where Mr Justice Arnold gave his ruling in JW Spear & Sons Ltd & Another v Zynga, Inc [2012] EWHC 3345 (Ch).  Mattel maintained that Zynga infringed four of its trade marks, of which the Scrabble tile (right) was one.  The verbal description of the mark states:
"The mark consists of a three dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10".
Zynga counterclaimed for the invalidity of the tile mark on the basis that it did not comply with the basic criteria of registrability under Article 2 of the Trade Mark Directive.  Zynga daringly opted to apply for summary judgment in this part of their counterclaim -- and got it.  In a judgment of only 50 paragraphs, the learned judge quite demolished the mark, concluding:
"...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".
This Kat has not yet had time to peruse the judgment closely; he or one of the other Kats may yet return to it -- but he just about has has time to send a katpat to his friend Paul Stevens at Olswang LLP (who appeared for Zynga) for alerting him to this decision.

A vote for IP Draughts
is a vote for Mr Pettifog ...
Around the weblogs. One day someone should write a doctoral thesis on the character and quality of that elusive but all-important character, the "informed user" in European design law. When that day comes, copious reference will no doubt be made to the Class 99 weblog, which has chronicled and commented on numerous "informed user" decisions -- the most recent of which, in Louver-Lite v Harris Parts, you can read here. Talking of character and quality, the IP Draughts weblog is making the most of its inclusion in the American Bar Association's Blawg 100: if you value well-informed pedantry as much as this Kat does, be sure to give it your unswerving, unconditional support.  IP tax folk can ruminate on not one but two posts in IP Finance on the recent UK Iliffe ruling on the failure of a tax scheme based on a classic no-no: the assignment in gross of an unregistered trade mark (the case itself is covered here, the obiter tax nuances, brilliantly explained by Anne Fairpo, here). Finally, Patricia Covarrubia (IP Tango) reports on a novel development in Brazil: the grant of GI protection to a service, Porto Digital, based in the lovely city of Recife.

But the Rottweiler
sometimes lets go ...
Vice-President of the European Commission Neelie Kroes, whose relationship to intellectual property might be likened [a cynic might say,. notes Merpel] to that of a dog reluctant to part with a bone even when there's little sign of meat remaining on it, has recently given a speech in the Culture Committee of the European Parliament (Brussels) in which she sought the views of members on three particular issues:
(i) how embracing the internet can help the creative sector to flourish;
(ii) how we are media freedom and pluralism in and outside the EU;
(iii)  Third, how we need strong digital infrastructure and frameworks for all of this to happen.
You can find her speech in full here, thanks to the IPKat's friend Magali Delhaye.  Merpel wonders whether "the creative sector" means, as she hopes it does, "people who create work which is blessed with copyright protection so that they can feel confident in developing and commercialising it", rather than "people who would be really good at creating profits if it wasn't for everybody else's copyright getting in the way"
Wednesday whimsies Wednesday whimsies Reviewed by Jeremy on Wednesday, November 28, 2012 Rating: 5


  1. Given the outcome in the Scrabble case, one wonders whether a different outcome might have been reached if a similar argument (or judge) had been deployed in the Cadbury case.

    I am still not convinced that "predominantly" is precise. What happens if one has a wrapper which has candy stripes in the following repeating pattern... purple, blue, red, green, purple

    One might say that the use of the colour purple in that situation is predominant, but is that really what the Registry understood?

    When does predominant become "entirely"? If one has an entirely purple wrapper with the brand on top in contrasting colour, is the wrapper predominantly purple or does the name of the product and the compliance information not count when establishing what is "predominant"?

  2. The highest-scoring word ever recorded being played in Scrabble (with or without registered trade mark protection in place for the tiles; though the player in question presumably relied on the defence that he was not using the tile ‘as a trade mark’…) was CAZIQUES – a type of Indian chief (392 points).

    The best ‘idealised’ word (i.e. if you get all the right letters and the space on the board to play it – so a million to one shot…) is currently BENZOXYCAMPHORS, which would score over 1950 points. Patent attorneys will probably get v excited about this.


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