Evidence Unscrambled: SCRABBLE Unsuccessful in Trade Mark Dispute at UK High Court
17 April 2014
On 1 November 2013, the High Court of England and Wales issued its decision in the case of JW Spear & Sons Ltd & Mattel. Inc. v Zynga, Inc  EWHC 3348 (Ch). The High Court decided that Zynga’s online game, SCRAMBLE WITH FRIENDS, does not infringe Mattel’s rights in its famous SCRABBLE mark, except in elements of its logo.
Interestingly, this is a part of a wider dispute between Mattel and Zynga in multiple jurisdictions, including France and Germany.
In January 2012, Zynga launched its game SCRAMBLE WITH FRIENDS, Scramble with friends, a word game where players try to find as many words as possible in a 4×4 grid of letters, for use on smartphones. Since its release, the game has been extremely successful, having been downloaded more than 13 million times worldwide.
Mattel is the owner of the following European Community trade marks:
On the basis of these trade mark rights, Mattel submitted that Zynga’s use of the marks SCRAMBLE, SCRAMBLE WITH FRIENDS and Scramble with friends (“Zynga’s marks”) constituted trade mark infringement on the grounds that such use was likely to confuse consumers and take advantage of, or be detrimental to, Mattel’s reputation attached to the SCRABBLE mark. Mattel also alleged that the use of Zynga’s marks would amount to passing off, since it would cause damage to the goodwill tied to the SCRABBLE mark.
The judge held that the use of Zynga’s marks (with the exception of the logo) did not infringe the rights of Mattel’s SCRABBLE marks, nor did it constitute passing off. The judge noted that he was not convinced that consumers would be confused or deceived by the marks.
In terms of Mattel’s SCRAMBLE registration, the judge noted that this is an ordinary English word which has become common for use in conjunction with games. Mattel’s SCRAMBLE registration was said to be invalid for these reasons. On this basis, Zynga’s use of this mark was merely descriptive of the game that it provided and did not amount to trade mark infringement.
However, in contrast to the above, the judge was of the opinion that the “m”, M, in the Scramble with friendslogo did amount to an infringement, since it gave the impression of the letter “b” on its side and, at a glance, this may be viewed as the world SCRABBLE.
Impact of Evidence
Mattel’s attitude to Zynga’s use of its game was considered by the judge to be a significant piece of evidence in this matter. The evidence disclosed in the proceedings detailed extensive internal knowledge within Mattel of Zynga’s use of SCRAMBLE from as early as 2007. Since that time, Zynga has made five different versions of its game. Mattel had consciously opted not to take any action against Zynga until the commencement of these proceedings. In addition, in 2010 Mattel made an unsuccessful pitch for a licence to produce physical versions of Zynga’s games. Mattel lost out to its rival Hasbro, who is the proprietor of the rights to SCRABBLE in the US and Canada. The judge alluded to this as potentially being a catalyst for Mattel bringing the action.
Such evidence prompted the judge to adopt the conclusion that Mattel did not really believe that Zynga’s products infringed their rights. In essence, it can be inferred that Mattel ought not to be able to rely on infringement proceedings to prevent Zynga’s use of the SCRAMBLE mark where they themselves did not perceive there to be any potential confusion between the marks.
Impact for Brand Owners
In trade mark infringement cases, where evidence of confusion is not presented, it is for the judge to use his instinct to determine whether confusion is likely to exist. Therefore, gathering and presenting evidence of confusion is a vital step in proving that trade mark infringement has occurred.
This case demonstrates the danger in allowing potential infringers to continue use of a conflicting mark without taking proactive steps to assert enforceable trade mark rights. The judge placed considerable weight on this factor and, without any evidence to the contrary, was left to make a finding that the marks were not confusingly similar and, as a result, there was no infringement.
Trade Mark Group