Neutral Citation Number: [2013] EWCA Civ 1175
Case No: A3/2013/0062
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
THE HON MR JUSTICE ARNOLD
[2012] EWHC 3345 (Ch)
Royal Courts of Justice
Strand, London, WC2A 2LL

Date: 4 October 2013
Before:

LORD JUSTICE LEWISON 
SIR JOHN MUMMERY
and
SIR TIMOTHY LLOYD
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Between :

	(1) J.W. SPEAR & SON LIMITED
(2) MATTEL INC,
(3) MATTEL U.K. LIMITED 	Appellants	
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	ZYNGA INC.	Respondent	
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 (Transcript of the Handed Down Judgment of
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)
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MR MICHAEL SILVERLEAF  QC and MR JEREMY HEALD (instructed by Bird & Bird LLP) for the Appellants
MR JAMES MELLOR QC and MR PHILIP ROBERTS (instructed by Olswang LLP) for the Respondent

Hearing dates: 26 & 27 June 2013
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Judgment
Sir John Mummery:
Introduction
1.	This action involves a challenge to the validity of a registered trade mark associated with the popular word game SCRABBLE. The trade mark is owned by the Mattel claimants (Mattel), along with other intellectual property rights.  It is called “the Tile Mark” in this judgment, as it was in the court below.
2.	Mattel’s claims against the defendant Zynga Inc (Zynga) are for infringement of the Tile Mark in connection with the exploitation of a digital game SCRAMBLE WITH FRIENDS.  In the infringement proceedings Zynga counterclaims for revocation of the Tile Mark. On 26 October 2012 Zynga applied for summary judgment on the counterclaim. It was successful.
3.	This appeal by Mattel is from the summary judgment granted by Arnold J on 28 November 2012. He declared that the registration of the Tile Mark (UK Trade Mark Registration No. 2154349) was invalid, as it did not comply with Article 2 of the Directive 2008/95/EC of 22 October 2008 (the Directive). 
4.	The Tile Mark is registered in respect of “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, all being registered on 1 December 2000 with effect from 23 December 1997. According to the verbal description of the Tile Mark it consists of a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10. 
5.	Broadly stated the debate is about whether the feature which is the subject of the registration was a simple property of the subject matter, as distinct from being “a sign” that satisfies the requirements of Article 2. The main ground of appeal is that the judge was wrong to decide summarily that the distinctiveness of the Tile Mark was irrelevant in determining whether the first two conditions of Article 2 are satisfied i.e. the requirement of  “a sign” and the requirement that the sign is capable of “graphic representation.”
6.	 It is common ground that the issue of the nature, scope and magnitude of the distinctiveness of the mark were all matters for trial. Mattel’s central case on the appeal is that the distinctiveness of the Tile Mark in fact should be taken into account in the overall assessment for the purposes of the requirements of Article 2. That should be done at trial. Arnold J did it without a trial.
7.	The alternative contention is that, if that submission is rejected, the interpretation of Article 2 is not acte clair against Mattel and that a reference to the Court of Justice of the European Union (CJEU) is necessary to resolve the issue. Mattel’s preferred position at this stage is that it would rather have a trial to find all the facts relevant to all the requirements of Article 2 than a reference for a ruling on the interpretation of Article 2. If it turns out that a reference is necessary in order to decide the case at trial, that is the stage at which to make a reference.  
8.	In granting permission to appeal Lewison LJ gave a case management direction that the Tile Mark appeal be listed for hearing at the same time as the Cadbury “colour purple” appeal in Societé des Produits Nestlé SA v. Cadbury UK Limited [2012] EWHC 2637 (Ch) (Cadbury). In both appeals there is an issue on whether there is “a sign” registrable as a trade mark in accordance with the requirements of Article 2, as interpreted in the judgments of the CJEU. Some of the general points that can be derived from those judgments are stated in paragraph 15 of the lead judgment in Cadbury and will not be set out again in this judgment.  
Background facts
9.	Mattel has other three dimensional trade mark registrations for game tiles used in SCRABBLE. They are not in issue on this appeal. The objection to the Tile Mark is principally made on the ground that it is not “a sign” capable of graphic representation on account of the large variety of representations encompassed by it. It is in substance, says Zynga, an attempt to make a trade mark do the job of a patent by way of a potentially perpetual monopoly over a huge variety of permutations, presentations and combinations, all of which would, if the registration were valid, potentially fall to be regarded as signs identical with the Tile Mark. 
Law 
10.	The main points in the CJEU judgments cited by Arnold J are in paragraph 15 of the Cadbury judgment. The essence of the legal requirements is  encapsulated in this short statement: in order to be capable of constituting a trade mark, the subject matter of any application must satisfy three conditions required by Article 2 of the Directive:-
“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)
11.	Arnold J held that the Tile Mark did not satisfy the first two conditions. He also held that, in making the assessment whether there was a sign capable of being graphically represented, it was not relevant to consider the distinctiveness of the mark. Mattel disagrees with those rulings.
Judgment  
12.	Having summarised the background to the case the judge stated the principles applicable to summary judgment applications, as set out in a valuable passage in the judgment of Lewison J in Easyair Ltd v. Opal Telecom Ltd [2009] EWHC 339 (Ch) at [15]. Arnold J then considered the requirements of Article 2 of the Directive, as interpreted in rulings of the CJEU cited by him and now distilled in paragraphs 14 and 15 of the lead judgment in Cadbury. He quoted key paragraphs from the judgments in Libertel, Heidelberger, Dyson and Sieckmann on the three conditions. He addressed the parties’ arguments and then applied the law to determine the validity of the Tile Mark.  
13.	Arnold J’s reasons for holding that the Tile Mark was invalid were that (a) it was not a sign; (b) it was not capable of being represented graphically; and (c)  it was no answer  to say, as Mattel did, that they intended to prove at trial that the Tile Mark had acquired a distinctive character. The judge firmly rejected Mattel’s contention that distinctive character had a bearing on the question whether the first two conditions of Article 2 were satisfied. The contention had no real prospect of success at trial. It was without support in the authorities cited, down to and including the judgment of HHJ Birss QC appealed in Cadbury.
14.	Turning to the first condition of “a sign” he stated the reasons for his conclusion:
“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.”    
15.	As for the second condition of graphic representation he stated the following reasons for his conclusion:-
“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.”  
Mattel’s submissions
16.	Mr Michael Silverleaf QC appearing for Mattel made forceful oral submissions. They supplemented the skeleton argument which had been submitted before he was instructed on the appeal. He concentrated his oral presentation on the summary nature of the judgment against Mattel, contending that the case should be allowed to go to trial in the usual way in order to determine the issue of distinctiveness and its relevance in the assessment of whether the requirements of “a sign” and of “graphic representation” were satisfied in this case.
17.	Although Mr Silverleaf QC made no express reference to the skeleton argument which he had not prepared, he did not dissociate his oral presentation from it, nor did he put in any substitute or supplementary skeleton argument of his own. The aim of his oral submissions was to develop various arguments that he considered important, with particular emphasis on the unsuitability of the summary judgment procedure in this case.    
18.	The main thrust of the oral submissions was that the degree of precision required for the registration of a trade mark depends on the mark itself and its distinctive character and that for any mark there is a degree of permissible variation in its graphical representation: see Kerly on Trade Marks (15th Ed) at 2-049. Without reference to the distinctive character of the mark, it was not possible to determine the appropriate degree of latitude to be afforded regarding precision.
19.	It was submitted that the three requirements in Article 2 for registration cannot be viewed independently of each other. They are interrelated elements of the same Article. Thus, in order to determine whether there is “a sign” which is capable of being represented graphically, it is necessary to know what its distinctive character is. Evidence of distinctive character (i.e. the impact of the mark on the average customer) is, he said, critical in determining whether the graphic representation is sufficiently precise and whether what is sought to be registered is “a sign.”
20.	He accepted that there were some cases in which it would be possible to say, without reference to the requirement of distinctiveness, that the first two requirements of Article 2 could never be satisfied. He cited Dyson as such a case. He distinguished it as a case in which what was said to be a sign was not the subject of graphical representation, but went far beyond it, so that the graphical representation did not capture the entirety of what was claimed to be the subject matter of the application: all that were represented were examples which did not capture the class. The representation was not self-contained, as it was capable of covering a multitude of different forms and uncertain shapes, which did not satisfy the requirement of “a sign.” It was an instance of an application to register something that could not be properly defined by graphical representation or treated as “a sign.”
21.	Mr Silverleaf QC contended that cases such as Dyson did not decide that any mark which is capable of being represented in a variety of different forms is uncertain and not “a sign.” The cases do not go that far. It is, he said, manifestly clear that many marks may be represented in a variety of forms. If the public can recognise the range of representations as being the mark, there is sufficient certainty and precision in the representation for the mark to be “a sign.” He gave the example of a word mark, where the distinctiveness resides in the sequence of letters forming the word that is recognised, but which can theoretically be represented in an infinite variety of ways as to typeface, sizes, colours, layout, case and combinations of them.  
22.	He submitted that there was nothing inaccessible or unintelligible about the subject matter of Mattel’s application in this case. The representation did not cover anything outside the scope of the graphic representation, which captured the class completely. As for the distinctiveness claimed for this mark, he explained that it is necessary to understand what the public perceives before the assessment of the first two requirements of Article 2 can be made. In this case all three requirements had to be looked at together, not sequentially. It was impossible to judge the precision of the graphic representation or the nature of the sign without first determining on the evidence at trial what the public had come to recognise in what is depicted. That is why a trial is necessary and why the judge was wrong to grant summary judgment.        
Zynga’s submissions 
23.	Zynga’s overall objection to the validity of the Tile Mark is that it is an impermissible attempt to monopolise a concept of an ivory-coloured three-dimensional tile of indeterminate size with a letter and a numeral somewhere on its upper face. Mattel already have three dimensional trade marks for game tiles used in SCRABBLE. The Tile Mark was unregistrable as an additional mark, as it encompassed a range and variety of graphically distinct representations as illustrated  by the following permutations:-

24.	Mr James Mellor QC appearing for Zynga said that the appeal should be dismissed, as the approach and conclusion of Arnold J could not be faulted in any material respect. The judge had got it right for the reasons he gave.  
25.	Mr Mellor QC cited Dyson as a recent example of the way in which the three conditions set by Article 2 of the Directive are applied by the CJEU to trade mark applications. In the present case the Tile Mark failed the first two conditions: it was not “a sign” nor was it capable of being represented graphically. 
26.	It was no answer for Mattel to say that it would prove at trial that the Tile Mark had acquired a distinctive character. That was an irrelevant factor in the assessment of the first two conditions. The first two conditions have to be decided separately, in stages and in that order, prior to addressing the  requirement of distinctiveness. Mattel’s “paella approach” to Article 2, as Mr Mellor QC described it, was not a recipe to be found in the judgments of the CJEU or in the Cadbury judgment of HHJ Birss QC.
27.	The subject matter of each application for registration had to be assessed objectively and separately for compliance with the conditions set by Article 2. The Tile Mark in this case was not “a sign” capable of conveying some message: it was many signs. In consequence it could not be described as clear, precise, durable or self contained.
28.	As for the submissions made by Mr Silverleaf QC, they were described by Mr Mellor QC as “mixing everything together in one giant paella dish” which you had to taste to find out whether there was any distinctive character. The suggestion that distinctive character of the subject of the application gives you the answer to everything else is not supported by any of the judgments of the CJEU. He disputed Mr Silverleaf’s attempt to distinguish Dyson from this case, which Mr Mellor described as more extreme than Dyson, as the representation of the Tile Mark gave no example of how the letter and the numeral are presented. It was an attempt to register a class covering a multitude of different appearances contrary to Article 2, which confines registration to signs that can be graphically represented. The perception of the public or the average consumer is not brought into the assessment of the satisfaction of the first two conditions in Article 2. Such subjective considerations are irrelevant. What matters is that there is a sign and a graphic representation of it that tell everybody the same thing. Hence the requirements re-iterated in the judgments of objectivity, durability, precision, clarity, intelligibility, accessibility and being self-contained.  
29.	He said that the example of the registration of a word mark given by Mr Silverleaf QC did not support Mattel’s submissions. A word mark on the register is a single sign which is precise, intelligible, and self-contained: it is not an instance of a class, because it is distinctive on its own, whatever the presentation of it.
30.	Mr Mellor QC supported his submissions by reference to the provisions in s. 41 of the 1994 Act governing the representation of “a series of trade marks” which resemble one another as to material particulars and differ only as to matters of non-distinctive character not substantially affecting the identity of the trade mark. Registrations of up to 6 marks may be made in that way, each being a separate registration. The registration of a series could not be made in this case because of the different letters and numbers involved.               
Discussion and conclusions
31.	The judge correctly directed himself on the terms of the legislation, the interpretative authorities, the applicable principles and the test for summary judgment. All that is agreed. Mattel’s complaint is that the judge misapplied the law stated by him to the facts found by him. I reject that criticism.
32.	I agree with Mr Mellor QC that the judge reached the right conclusion for the right reasons. The position can be stated almost as summarily as the order made by the judge. There is no point in spinning it out:-   
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.  
33.	I would reject the submissions made by Mr Silverleaf QC as being unsupported by the terms of the legislation or by the legal points distilled from the authorities on its interpretation. I do not find his “paella” approach palatable.
Result
34.	I would dismiss the appeal. 
35.	In brief, there was absolutely nothing wrong, either in law or in fact, with the judge’s reasons, his conclusions, or his order. There is no advantage in further repetition of the reasoning contained in a judgment, which I would affirm without reservation. 
Sir Timothy Lloyd
36.	I agree with Sir John Mummery that the appeal should be dismissed.  The judge was right in both his conclusion and his reasoning.
Lord Justice Lewison
37.	I agree.