JW Spear & Sons Ltd & Others v Zynga Inc
This case concerns a dispute between Mattel, maker of the famous word-forming physical and electronic board game SCRABBLE, and Zynga the world’s largest social gaming company. In 2007 Zynga launched an electronic game called SCRAMBLE which shares essential elements of the SCRABBLE board game and which had by 2012 evolved into a game very similar to SCRABBLE called SCRAMBLE WITH FRIENDS (also used in a logo format). At this point Mattel sued Zynga claiming their use infringed several of Mattel’s earlier CTM Registrations for electronic games including SCRABBLE and SCRAMBLE, as well as its unregistered rights.
In the High Court, Mattel’s claim largely failed. Although the trademarks differ only as to one letter, it was held that SCRAMBLE (and SCRAMBLE WITH FRIENDS) was not similar to SCRABBLE. Further, although SCRAMBLE was clearly identical with Mattel’s earlier CTM Registration for SCRAMBLE, this claim also failed because the Court found Mattel’s CTM registrations to be invalid or revocable on the basis the word ‘scramble’ was a common English word descriptive of a word game which required a scramble for letters in a fixed period of time. It was also determined that ‘Scramble’ is a generic term which had been commonly and extensively been used by third parties, both before and after the date of registration of the Community Trade Marks, in relation to a range of physical and electronic board games where the user is required to make one or more words from scrambled letters.
On Appeal, Mattel sought to bolster its case on trademark infringement by claiming that features extraneous to its registered trademarks SCRABBLE and SCRAMBLE, such as its use of tiles, numbers, premium word scores, and a background colour of ‘woodland green’, should also be taken into account when assessing the likelihood of confusion arising from Zynga’s use.
The Court of Appeal did reverse a significant portion of the judgement at first instance. In particular, the Court found that while SCRAMBLE had a quite high degree of descriptive allusiveness it was not high enough to be descriptive so as not to be considered registerable, and nor did the evidence show it to be a customary or established term in the market at the relevant time in relation to physical or electronic word games. In view of this finding, it was inevitable that Zynga’s use of the identical trademark SCRAMBLE in relation to identical goods, namely, electronic computer games, would be held to infringe Mattel’s earlier CTM registration SCRAMBLE.
Perhaps unsurprisingly, the Court of Appeal also went on to disagree with the trial judge in that they found that there was an obvious degree of visual, phonetic and conceptual similarity between Zynga’s SCRAMBLE (and SCRAMBLE WITH FRIENDS) and Mattel’s SCRABBLE trademark. In view of the identity of the goods, and the reputation which the SCRABBLE trademark benefits from, it might be thought that a finding of likelihood of confusion was also inevitable. However, the Court of Appeal went on to hold that Mattel’s claim of infringement of its CTM registration SCRABBLE failed because Zynga’s use of SCRAMBLE and SCRAMBLE WITH FRIENDS was extensive, long standing and side by side with Mattel’s use of its registered trade mark SCRABBLE so that there was an obvious argument that, if a real likelihood of confusion existed, it should have resulted in far more abundant evidence of confusion by the time of trial.
So, overall a victory for Mattel. However, the Court’s refusal to find a likelihood of confusion on the evidence highlights the difficulty trademark owners face in establishing sufficient evidence of actual confusion to overwhelm ‘infringing’ established use in the marketplace. The decision also points to the desirability of taking swift action to tackle an infringement claim, especially in a case such as the present where the trademark also benefits from an extensive reputation.