The New York Times, owners of the vocabulary game Wordle, and the owner of “Germany’s Wordle” are seeking to reschedule their October UK trademark hearing.
The hearing was originally booked for October 10th, but according to the UK Intellectual Property Office the parties have requested a different date, which is currently expected to be later this year.
Wordle was developed in 2021 by Josh Wardle and became popular during the Covid-19 pandemic.
The New York Times subsequently purchased the game in 2022 for an undisclosed low seven-figure sum.
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The UK hearing is part of a long-running dispute between the New York Times and Stefan Heine, a Hamburg-based puzzle maker, over trademark rights to the name Wordle.
According to a court filing by the US newspaper, immediately after it was publicised that the New York Times had “acquired the rights to the [Wordle] game and the mark”, Mr Heine filed a trademark application in Germany, the rights to which were secured on February 1st, 2022.
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According to the New York Times filing, “he then followed that with a flurry of international trademark application designations for Wordle ... in Norway, Switzerland, [with] the EUIPO [the European Intellectual Property Office], and the UK, … [with] no lawful basis”.
These moves were met with legal measures in the various jurisdictions by the New York Times, which in turn are being contested by Mr Heine, according to the newspaper’s filing.
In July 2023, the New York Times applied to register the trademark for Wordle in the UK, and in August of that year it filed an invalidation action against Mr Heine’s UK Wordle trademark registration.
The newspaper claimed that Mr Heine’s registration should be cancelled due to a risk of passing off. This is based on the New York Times’ claimed use of the word Wordle throughout the UK since June 2021. It is also claimed that Mr Heine’s Wordle trademark was applied for in “bad faith”.
In November 2023, Mr Heine opposed the New York Times’ trademark application on the basis of his earlier trademark application in August 2022, which was protected in December 2022.
The Hamburg puzzle maker also claims a priority filing date of February 1st, 2022, from his German Wordle trademark registration.
Meanwhile, the New York Times claimed that on January 31st, 2022, it acquired all of Mr Wardle’s rights in the Wordle game and its trademark, which the US paper claimed Mr Wardle created “around January 2021”.
The newspaper is also claiming that by February 1st, 2022, Wordle was a “well-known trademark” as per the UK legislation and the Paris Convention.
A spokesperson for the New York Times confirmed that the paper is opposing the registration of the UK trademark for Mr Heine’s Wordle “as part of our standard IP protection efforts, because we think it is likely to cause confusion among consumers about the source of the mark”.
The legal representatives for Mr Heine – Murgitroyd & Company – said that as the cases were ongoing they were unable to comment “as we are keen not to prejudice our client’s case”.
