Scrabble v Scramble: a jumbled decision?

Scrabble v Scramble: a jumbled decision?

Published:

Author: Laura Harper

Applies to: England and Wales

The appeal against the High Court's ruling of JW Spear & Sons Ltd, Mattel Inc and Mattel UK Limited v Zynga Inc was decided recently - what does the decision mean for brand owners?

Background

The Mattel group are owners of community trade marks (CTMs) for the words SCRABBLE and SCRAMBLE; a figurative CTM containing the word 'scrabble' and a UK trade mark for the shape of a SCRABBLE playing tile. The marks cover (amongst other things) electronic games.

In 2012 Mattel issued proceedings against Zynga for trade mark infringement and passing off in relation to its online games "Scramble" and "Scramble with friends" (SWF). The High Court ruled in favour of Zynga in respect of the UK trade mark, which it declared was invalid. It also dismissed all of Mattel's claims in respect of its CTMs, except for a claim relating to Zynga's use of the SWF logo. The logo contained a stylised letter 'm', which it was held that 'on a quick glance' could potentially be confused with Mattel's SCRABBLE marks. The judge also found infringement and passing off of Mattel's CTM for the word mark SCRAMBLE, however the CTM was found to be invalid as it was descriptive or generic in relation to games similar to SWF.

Both parties appealed against the judge's decision.

The Court of Appeal's decision

The Court of Appeal allowed Mattel's appeal on the validity of the SCRAMBLE UK trade mark; however it upheld the High Court's decision dismissing the claims of infringement of the SCRABBLE CTMs and the action of passing off.

The judge also allowed Zynga's appeal on the infringement of the SCRABBLE CTMs by use of the logo containing the stylised 'm'. Zynga's appeal against the infringement of the SCRAMBLE mark was dismissed.

In reaching its decision, the Court of Appeal considered the following questions:

  • Can the owner of a trade mark rely on the context of the use of the mark in such matters?

In relation to the context in which is the mark is used, the judge concluded that this can be only be relied upon to a limited extent and that the mark as it appears on the register should be compared with the sign as it appears to the average customer.

  • When deciding if there is a likelihood of confusion, is there a minimal threshold of similarity which the Court must apply?

It was held that there is no minimum threshold of similarity. It is a question of degree and it is 'overall similarity which counts'. Where there is some overall similarity, even if this is slight, a global assessment taking account of all relevant circumstances should be carried out.

  • What is the relevance of the descriptive connotation of a sign?

The judge held that the descriptive nature of a sign is a factor, amongst others, to be considered when assessing the risk of confusion; 'the more obvious the descriptive meaning, the more power there is in this factor'. It is also a factor to be considered when deciding if a mark is invalid.

  • Was there an infringement of the SCRAMBLE CTM?

The judge agreed with the decision of the High Court that the use by Zynga of the 'Scramble' sign for goods identical to those for which the SCRAMBLE CTM was registered was an infringement.

  • Was there an infringement of the SCRABBLE marks?

Although there was a degree of visual, phonetic and conceptual similarity between 'Scramble' and SCRABBLE, the small differences between the mark and sign were sufficient to prevent confusion arising amongst a significant proportion of the public. In reaching this decision, the judge compared the two gaming apps, not the SCRABBLE board game and SWF app. The judge also considered that there should be significant evidence to demonstrate that there had been confusion in the marketplace. Mattel's lack of evidence in this respect was a key factor in the judge's decision.

How does the decision affect me?

Although Mattel won the case on appeal, the decision of the Court of Appeal is unsatisfactory as it did not fully address the similarities between the trade marks SCRABBLE and SCRAMBLE. As outlined in the judgment, there are clear visual, phonetic and conceptual similarities between the 'Scramble' and SCRABBLE marks in this case and the marks are used for identical goods. It could also be argued that the SCRABBLE mark is one with the most significant reputation, meaning it is capable of additional protection.

Therefore, it seems that in this case the judge might also have held that the SCRABBLE marks had been infringed.

If this decision of the Court of Appeal is followed in subsequent cases, there could be significant ramifications for trade mark infringement claims as the judgment creates a high threshold to be met in deciding whether there has been an infringement, particularly in relation to the level of evidence that must be given to prove confusion in the marketplace.

Remind me, how can a trade mark be infringed?

If you use a trade mark in the following ways, you may be infringing a pre-existing registered mark:

  • you use an identical sign for identical goods to those for which the trade mark registered
  • you use an identical sign for similar goods to those for which the trade mark is registered and the use creates a likelihood of confusion on the part of the public
  • you use a similar sign for identical goods or similar goods for which the trade mark is registered and the use creates a likelihood of confusion on the part of the public
  • you use an identical or similar sign for dissimilar goods where the registered mark has a strong reputation, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark

Consequently, when selecting a trade mark or brand name you should ensure that adequate searches of the relevant trade mark registers are conducted to enable you to (i) avoid pre-existing registrations and (ii) select a distinctive mark which will help prevent your business from becoming involved in trade mark litigation and enable you to build a strong brand.

If you would like further information on this case or assistance with a trade mark or branding query then please do get in touch.

About the Author

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Laura Harper

Partner

03700 86 5881

Laura is an experienced intellectual property lawyer. She helps businesses and professionals, reliant upon the intellectual property which they produce, to protect and commercialise their products and services. She is a leading professional advisor to businesses in the creative industries and digital sectors.

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