J W Spears & Sons Ltd, Mattel inc , Mattel UK Ltd v Zynga Inc [2013] EWCA Civ 1175

Case Summary  |  Judgment  |   9 October 2013

James Mellor QC recently appeared with Phillip Roberts for the successful respondent Zynga in an appeal from summary judgment handed down in JW Spear & Sons Ltd and Mattel Inc v. Zynga [2012] EWHC 3345 (Ch).

At first instance, Arnold J found for Zynga. He held that the claimants' UK registered trade mark, for a tile used in the board game SCRABBLE, was invalid on the basis it did not comply with article 2 of the Trade Mark Directive; the mark was not a "sign" nor was it capable of graphical representation. It was further held that the distinctiveness or otherwise of the claimants’ mark was irrelevant in determining whether those conditions were met.

The claimants brought their appeal primarily on the ground that it was wrong for the learned judge to have decided summarily that the distinctiveness of the claimants’ mark was irrelevant in the manner held. In the alternative, the claimants contended that the interpretation of Article 2 was not acte clair, and such, that it was necessary to refer the matter to the CJEU for resolution.

Dismissing the appeal [2013] EWCA Civ 1175, Sir John Mummery, with whom Lewison LJ and Sir Timothy Lloyd agreed, found that Arnold J had correctly directed himself on the law and its application. The interpretation of Article 2 was acte clair and had been properly applied by Arnold J. This appeal was heard in conjunction with Nestle’s appeal against the judgment of HH Judge Birss QC (as he then was) Nestle v Cadbury [2012] EWHC 2637, allowing Cadbury’s application to register a colour purple applied to the whole or a predominant part of the packaging. In allowing Nestle’s appeal and finding that the mark did not satisfy Article 2, the same Court of Appeal [2013] EWCA Civ 1174, summarised the requirements in Article 2, derived from the CJEU case law.