A few months ago, American toy manufacturing company Mattel, Inc. claimed that social media game developer Zynga had infringed four trade marks that were registered as far back as 2000, with regard to ‘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. The marks were described as “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 filed a counterclaim for the invalidity of Mattel's registration, citing that the mark cannot be registered under Article 2 of the European Trade Mark Directive. Article 2 of the Trade Mark Directive requires a mark to be a "sign" and capable of "being represented graphically," in order to qualify for registration. Zynga submitted that four variations of Mattel's registered mark demonstrated that it is not a single sign:
The court agreed that the Scrabble tile mark does not constitute a sign and cannot be represented graphically. Additionally, they upheld Zynga's claim that the Tile Mark can cover "an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile." The end result is that Mattel's claim backfired, as Zynga managed to convince the courts to cancel their registration.
Trade mark applicants should be extremely careful when describing any mark that they want to register, especially if it is an unconventional mark. Where possible, it will be a good idea to describe the uses of the mark, even where it is not a requirement when filing an application, as it will help define the scope of the mark and help undermine the requirements in Article 2 of the Trade Marks Directive and it's equivalents in other jurisdictions.