Factual and Procedural Background
This action concerns a challenge to the validity of a registered trade mark known as "the Tile Mark," associated with the word game SCRABBLE. The Tile Mark is owned by Company A, who brought claims against Company B for infringement related to a digital game called SCRAMBLE WITH FRIENDS. Company B counterclaimed for revocation of the Tile Mark. On 26 October 2012, Company B successfully applied for summary judgment on the counterclaim. Company A appealed the summary judgment granted by Judge Arnold on 28 November 2012, which declared the Tile Mark registration invalid for non-compliance with Article 2 of Directive 2008/95/EC.
The Tile Mark is registered in respect of computer game adaptations of board games, board games, and organisation of competitions and exhibitions relating to board games. The mark consists of a three-dimensional ivory-coloured tile displaying a letter of the Roman alphabet and a numeral from 1 to 10. The dispute centers on whether this feature is merely a property of the goods or a "sign" meeting Article 2 requirements, particularly regarding distinctiveness and graphic representation.
Company A contends that the distinctiveness of the Tile Mark should be considered in assessing compliance with Article 2 and that these issues require a trial. Alternatively, Company A argues that if the interpretation of Article 2 is unclear, a reference to the Court of Justice of the European Union (CJEU) would be appropriate at trial stage. The appeal was listed for hearing alongside a related appeal concerning a colour trade mark registration.
Legal Issues Presented
- Whether the Tile Mark constitutes "a sign" as required by Article 2 of Directive 2008/95/EC.
- Whether the Tile Mark is capable of being represented graphically in a manner that is clear, precise, intelligible, and objective.
- Whether the distinctiveness of the Tile Mark is relevant to the assessment of the first two conditions of Article 2.
- Whether a reference to the CJEU is necessary for interpreting Article 2 in this context.
Arguments of the Parties
Appellant's Arguments
- The summary judgment was premature; the issue of distinctiveness and its relevance to the first two conditions of Article 2 requires a full trial.
- The three requirements of Article 2 (sign, graphic representation, distinctiveness) are interrelated and should be assessed together rather than sequentially.
- The degree of permissible variation in graphic representation depends on the mark’s distinctive character, which must be established before assessing the sufficiency of the graphic representation.
- The Tile Mark’s graphic representation covers the class completely and is not unintelligible or imprecise.
- Distinctiveness evidence is critical to determine whether the Tile Mark is "a sign" and whether its graphical representation is adequate.
- Cases such as Dyson do not preclude marks capable of multiple representations from being valid signs if the public recognises them as such.
Appellee's Arguments
- The Tile Mark is an impermissible attempt to monopolise a broad concept of an ivory-coloured three-dimensional tile with a letter and numeral in unspecified size and position.
- The Tile Mark fails the first two conditions of Article 2 as it is not "a sign" and is not capable of clear, precise, and objective graphic representation.
- Distinctiveness is irrelevant to the assessment of the first two conditions and must be considered only after these are satisfied.
- The Tile Mark covers an infinite number of permutations and thus cannot be regarded as a single sign.
- The public perception or average consumer’s view is irrelevant to the first two conditions; objectivity and clarity are paramount.
- The analogy to word marks is inapposite because word marks are single, precise signs, unlike the Tile Mark’s broad class.
- Legislation allows registration of a series of marks only where differences do not substantially affect identity; this does not apply to the Tile Mark’s variety of letters and numbers.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Dyson |
Defines the three conditions for trade mark registration under Article 2: (1) must be a sign; (2) capable of graphical representation; (3) capable of distinguishing goods/services. |
Used to illustrate that a sign must be precisely and graphically represented; the Tile Mark failed as it covered an indefinite number of permutations. |
| Societ des Produits Nestl SA v. Cadbury UK Limited [2012] EWHC 2637 (Ch) |
Clarifies interpretation of Article 2 conditions and the relevance of distinctiveness in trade mark registration. |
Referenced for general principles on the requirements of "a sign" and graphical representation; the court aligned its reasoning with this judgment. |
| Easyair Ltd v. Opal Telecom Ltd [2009] EWHC 339 (Ch) |
Sets out principles applicable to summary judgment applications. |
Guided the court’s approach to summary judgment in this case. |
| Libertel, Heidelberger, Sieckmann |
Provide jurisprudence on the requirements of clarity, precision, intelligibility, and objectivity for graphical representation of trade marks. |
Quoted and applied to assess the Tile Mark’s graphical representation and sign status. |
Court's Reasoning and Analysis
The court applied the three conditions of Article 2 of Directive 2008/95/EC, as interpreted by the CJEU, to the Tile Mark. It held that the Tile Mark failed the first condition of being "a sign" because it encompassed an infinite number of permutations regarding size, position, letter, and numeral, amounting to a mere property of the goods rather than a distinctive sign. This would unfairly grant Company A a perpetual monopoly over a broad class of tiles.
Regarding the second condition, the court found that the graphical representation was not clear, precise, intelligible, or objective. It covered a multitude of different combinations without allowing consumers or competitors to identify a specific sign or the scope of protection, making it insufficient for registration.
The court rejected the argument that acquired distinctiveness should influence the assessment of the first two conditions, holding that distinctiveness is irrelevant at this stage and must be considered only after establishing that the mark is a sign and capable of clear graphical representation.
The court further noted that the summary judgment was appropriate because the submissions advocating a trial on distinctiveness lacked real prospect of success and were unsupported by relevant authorities. It emphasized the objectivity and clarity required in trade mark registration, dismissing subjective considerations of consumer perception for the initial conditions.
Holding and Implications
The court DISMISSED the appeal, affirming the summary judgment that the Tile Mark registration is invalid for failure to satisfy the first two conditions of Article 2 of Directive 2008/95/EC.
The direct effect of this decision is that Company A’s Tile Mark registration remains revoked, preventing it from claiming trade mark protection over the broadly defined class of ivory-coloured tiles with letters and numerals. No new precedent was established, as the decision aligns with existing CJEU jurisprudence and prior case law. The ruling reinforces the principle that trade marks must be clear, precise, and objectively represented, and that distinctiveness is not relevant to the initial assessment of whether a mark qualifies as a sign or is graphically represented.