JW Spear & Sons Ltd & Anor v Zynga, Inc [2012] EWHC 3345 (Ch) (28 November 2012)

JW Spear & Sons Ltd & Anor v Zynga, Inc [2012] EWHC 3345 (Ch) (28 November 2012)

The Tile Mark does not satisfy the first and second conditions of Article 2 of the Directive because it covers an infinite number of permutations and lacks specificity and clarity, amounting to a mere property of the goods rather than a sign. The representation is not clear, precise, intelligible, or objective, and thus cannot function as a trade mark. Mattel has no real prospect of successfully arguing otherwise.

Citation
[2012] EWHC 3345 (Ch)
Parties
Claimant: J. W. Spear & Sons Limited; Claimant: Mattel, Inc.; Claimant: Mattel U.K. Limited; Defendant: Zynga, Inc.
Jurisdiction
England and Wales
Judgment Date
28 November 2012
Procedural Posture
Intellectual Property (trade Mark) Summary Judgment Application / Summary Judgment on Part of Counterclaim
Outcome
Summary judgment granted in favour of Zynga on the invalidity of the Tile Mark under Article 2 of the Directive.
Legal Topics
Trade Mark Validity, Graphical Representation of Trade Marks, Distinctiveness, Summary Judgment Procedure
Intellectual Property Trade Marks Trade Mark Validity Graphical Representation of Trade Marks Distinctiveness Summary Judgment Procedure

Case Brief

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Parties

J. W. Spear & Sons Limited

Claimant

Mattel, Inc.

Claimant

Mattel U.K. Limited

Claimant

Zynga, Inc.

Defendant

Procedural Posture

Intellectual Property (trade Mark) Summary Judgment Application / Summary Judgment on Part of Counterclaim

Legal Issues

  1. 1 Whether the Tile Mark satisfies the requirements of Article 2 of Directive 2008/95/EC (Trade Marks Directive)
  2. 2 Whether the Tile Mark constitutes a 'sign' and is capable of graphical representation as required by law

Ratio Decidendi

The Tile Mark does not satisfy the first and second conditions of Article 2 of the Directive because it covers an infinite number of permutations and lacks specificity and clarity, amounting to a mere property of the goods rather than a sign. The representation is not clear, precise, intelligible, or objective, and thus cannot function as a trade mark. Mattel has no real prospect of successfully arguing otherwise.

Court Disposition

Summary judgment granted in favour of Zynga on the invalidity of the Tile Mark under Article 2 of the Directive.

Orders

  • The Tile Mark is declared invalid for failure to comply with Article 2 of Directive 2008/95/EC.
  • Summary judgment entered for Zynga on this aspect of the counterclaim.