The High Court has held that a Scrabble tile trade mark is invalid, as it did not meet the basic registration requirements.
Background
The defendant developed a digital game called “Scramble with Friends”, which the claimants alleged infringed four registered trade marks including a trade mark for the Scrabble tile. The trade mark registration for the Scrabble tile showed a blank square tile (in 3D, as shown below) and was 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.”
The defendant applied for summary judgment in respect of the Scrabble tile mark arguing it was neither a sign nor capable of being represented graphically, as there were an infinite number of permutations of different sizes, positions and combinations of letter and number. In addition, the representation did not identify the extent to which the corners of the tile were rounded, nor was the colour “ivory” precise enough.
The claimants argued that the Scrabble tile mark had acquired distinctiveness owing to the long use of the mark and they had previously been granted permission by the court to conduct three surveys to obtain evidence of acquired distinctiveness.
Decision
The judge found in favour of the defendant on the basis that the Scrabble tile mark could not be a sign as there were a multitude of possibilities for the appearance of the tile. The claimants were not entitled to a monopoly on all ivory coloured tiles, as this would give them an unfair competitive advantage. Even if the Scrabble tile mark was a sign, the representation of it was not clear, precise, intelligible or objective.
The judge also concluded that because the trade mark did not comply with these requirements, it was pointless for the claimants to attempt to show that the mark had acquired a distinctive character through the use of expensive surveys.
The case continues in respect of the alleged infringement of three other registered trade marks.
Comment
While the Scrabble tile is well known to the general public, ultimately the trade mark was invalid because the description was too wide and allowed an infinite number of design combinations. The trade mark in this case was registered in 2000 and it is important to regularly review trade mark registrations to ensure that they remain valid, allowing you to protect and enforce your rights as trade mark law develops.