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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> JW Spear & Son Ltd & Ors v Zynga Inc  EWCA Civ 1175 (04 October 2013)
Cite as:  BUS LR 148,  Bus LR 148,  EWCA Civ 1175
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
THE HON MR JUSTICE ARNOLD
Strand, London, WC2A 2LL
B e f o r e :
SIR JOHN MUMMERY
SIR TIMOTHY LLOYD
| (1) J.W. SPEAR & SON LIMITED
(2) MATTEL INC,
(3) MATTEL U.K. LIMITED
|- and -
WordWave International Limited
A Merrill Communications Company
165 Fleet Street, London EC4A 2DY
Tel No: 020 7404 1400, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
MR JAMES MELLOR QC and MR PHILIP ROBERTS (instructed by Olswang LLP) for the Respondent
Hearing dates: 26 & 27 June 2013
Crown Copyright ©
Sir John Mummery:
"First, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings…" (Dyson)
"47. In my judgment the Tile Mark does not comply with the first condition for the following reasons. As Zynga rightly contends, the Tile Mark covers an infinite number of permutations of different sizes, positions and combinations of letter and number on a tile. Furthermore, it does not specify the size of the tile. Nor is the colour precisely specified. In short, it covers a multitude of different appearances of tile. It thus amounts to an attempt to claim a perpetual monopoly on all conceivable ivory-coloured tile shapes which bear any letter and number combination on the top surface. In my view that is a mere property of the goods and not a sign. To uphold the registration would allow Mattel to obtain an unfair competitive advantage."
"48. Even if the Tile Mark complies with the first condition, in my judgment it does not comply with the second condition since the representation is not clear, precise, intelligible or objective. As discussed above, the representation covers a multitude of different combinations. It does not permit the average consumer to perceive any specific sign. Nor does it enable either the competent authorities or competitors to determine the scope of protection afforded to the proprietor, other than that it is very broad."
Discussion and conclusions
i) The Tile Mark is not "a sign" as required by the first condition of Article 2. It potentially covers many signs achievable by numerous permutations, presentations and combinations of the subject matter of the registrations.
ii) There is no graphic representation of a sign as required by the second condition of Article 2 that meets the requirements of clarity, precision and objectivity.
Sir Timothy Lloyd
Lord Justice Lewison