Scrabble Trademark not infringed by Scramble with Friends Online App

Torion Bowles of our Commercial Litigation and Dispute Resolution Team takes a look at the recent Court of Appeal decision where it was found that Mattel’s Community Trademark for SCRABBLE was not infringed or passed off by Zynga Inc’s online words game Scramble With Friends (“SWF”).

A Community Trademark (“CTM”) provides protection across all EU member states, to its owner against third parties using without its consent and in the course of trade any sign/mark which is identical or similar to the CTM in relation to the goods or services for which the CTM is registered OR where there is a likelihood of confusion on part of the public. In addition, a CTM can also offer protection where a another business uses a sign which is identical/similar to the CTM in relation to goods or services which are not similar but where the usage takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the CTM. To obtain registration as a CTM the mark must not be merely descriptive of the characteristics of the goods or generic — so it is unlikely that a mark “Bread” or “Sliceable” would be granted for loaves of bread as that would prevent competitors describing their own products in ordinary words.

In the case of J.W. Spear & Sons Limited (Mattel) and another v Zynga Inc (2015), Mattel had CTMs for the words SCRABBLE and SCRAMBLE, a figurative CTM (a pictorial or graphic sign/logo) containing the word “scrabble” and a UK trademark for the shape of a SCRABBLE playing tile. These marks were registered for electronic games. Zynga Inc produced an online word game called “Scramble” and “Scramble with Friends” (SWF).

Mattel felt that Scramble and SWF infringed their registered trademarks and were passing off SCRABBLE and SCRAMBLE (confusing the public into believing they were connected with Mattel’s products).  Mattel issued proceedings in the High Court and the Judge found first, that Mattel’s UK trademark was invalid (so could not be infringed) and then dismissed the claims for infringement of the SCRABBLE CTMs despite finding that on quick glance there was potential for confusion between the marks as the stylised “M” in the title of SWF was similar to the stylised “B” in the title of SCRABBLE. There could be no infringement of the SCRAMBLE CTM as the High Court also found that it was invalid, as it too was descriptive or generic in relation to the characteristics of the goods (the way the game was played).

Mattel and Zynga each appealed the elements of the decision that went against them to the Court of Appeal. The Court of Appeal decided that the SCRAMBLE CTM was valid and had been infringed, but the decision of the High Court to dismiss the claims for infringement and passing off in relation to the SCRABBLE CTM was upheld.

Despite Mattel producing a number of reviews from I-Tunes, gaming review websites and Twitter indicating that members of the online gaming community had been confused between the games SCRABBLE and SWF, the Court considered that there was insufficient evidence that a significant part of the public was actually confused. The Court said that there is no particular level of similarity that has to be met before the courts should hold that the public would be confused but Mattel had just not produced sufficient evidence to prove that there was actual public confusion caused by the similarities between the stylised “M” in the title of SWF and the “B” in the title of SCRABBLE.  Zynga Inc was able to demonstrate that SCRABBLE and SWF had competed alongside each other in the electronic games market without causing significant confusion to the public.

The Court of Appeal did decide that Mattel’s SCRAMBLE CTM was valid, thus reversing the decision of the High Court on that point. The Court said that although the word scramble was a common word used to describe a rushed activity, the SCRAMBLE CTM was neither descriptive of a characteristic of the goods nor generic in the context of online gaming apps. Consequently, and unsurprisingly the Court found that the SCRAMBLE CTM was infringed by SWF and confusion would be inevitable. Adding the words “with friends” to the word Scramble would not prevent that confusion.

So, Zynga will have to change the word “Scramble” in its product name SCRAMBLE WITH FRIENDS, or, in reality, come up with an entirely different name, at least for Europe. That of course will be expensive and disruptive.

The final outcome of this case underlines the importance of clients obtaining evidence to substantiate actual confusion caused to the public, even where there appears to be clear similarity in the signs and marks. More basically it is a reminder of how careful businesses need to be when choosing names for their products and that they should avoid names that are similar to the registered trademarks of well established competitors.

For more information on intellectual property rights and their enforcement, please contact Torion Bowles of our Commercial Litigation and Dispute Resolution Team on 02380 717455 or visit their section of the website here.

ENDS

This is for information purposes only and is no substitute for, and should not be interpreted as, legal advice.  All content was correct at the time of publishing and we cannot be held responsible for any changes that may invalidate this article.