On 27 March 2015, the Court of Appeal handed down its judgment in the dispute regarding the Scrabble trade marks between JW Spear & Sons Ltd (“Mattel”) v Zynga Inc (“Zynga”).
Spear, which is a wholly owned subsidiary of Mattel Inc and maker of the board game SCRABBLE brought proceedings against Zynga, an online social game developer, for trade mark infringement and passing off in respect of Zynga’s use of the signs 'SCRAMBLE' and 'SCRAMBLE WITH FRIENDS' in connection with its electronic word games.
Mattel relied upon three Community trade marks: two for SCRABBLE (in the form of a word mark and a figurative mark) and one for the word mark SCRAMBLE. The marks covered, amongst other things, computer games, computer programs and software.
First Instance Decision: in a nutshell
At first instance the trial judge, Peter Smith J, largely found in Zynga’s favour. He held that:
- Mattel’s SCRABBLE marks had not been infringed by Zynga’s use of the signs SCRAMBLE and SCRAMBLE WITH FRIENDS and there was no passing off;
- Zynga’s use of the signs SCRAMBLE and SCRAMBLE WITH FRIENDS would have infringed Mattel’s SCRAMBLE mark. However, Peter Smith J held that the mark was invalid and/or liable to be revoked on the basis that it was a descriptive term and already in common use for word games; and
- Finding in Mattel’s favour, its SCRABBLE marks had been infringed by Zynga’s “twisted M” logo (depicted above), on the basis that the 'M' in the logo looked like a “B” and therefore meant that the logo would be read as SCRABBLE.
Both parties appealed.
Court of Appeal judgment: in a nutshell
The Court of Appeal ruled predominantly in Mattel's favour, reversing all but one of Peter Smith J's findings. Floyd LJ delivered the Court's judgment and held that:
- Mattel’s SCRABBLE marks had not been infringed by Zynga’s use of the signs SCRAMBLE and SCRAMBLE WITH FRIENDS (upholding the first instance decision);
- The validity of Mattel’s SCRAMBLE mark was reinstated (reversing the first instance decision). Zynga’s infringement of that mark was upheld; and
- Mattel’s SCRABBLE marks had not been infringed by Zynga’s use of the “twisted M” logo (reversing the first instance decision).
Mattel won the appeal, therefore, on the basis of its SCRAMBLE mark, but not its SCRABBLE marks.
Points of interest arising from the Court of Appeal’s judgment
Context of use: it is now established law since the Court of Appeal's ruling in Specsavers v ASDA (2012), that the context in which an allegedly infringing sign is used should be taken into account when determining whether it infringes the relevant mark. However, the issue in the present case was whether the context in which Mattel's mark for SCRABBLE had been used should also be taken into account. Mattel relied upon the CJEU's ruling in Specsavers that where a mark registered in black and white had been used in a particular colour which the public therefore associated with that mark, such use in that colour could be taken into account in assessing the likelihood of confusion. Mattel wanted to extend this to other contextual matter used 'routinely and uniformly' in association with a mark (here: tiles, numbers, premium word scores, woodland green background colour). Floyd LJ rejected this, stating that the contextual matter Mattel sought to rely on did not affect the average consumer's perception of the mark itself.
“A minimum threshold of similarity?”: the Court of Appeal was asked to rule on whether there has to be a minimum threshold of similarity between the mark and the allegedly infringing sign before the Court can then go on to consider whether a likelihood of confusion exists between the two. The Court of Appeal held that no such minimum threshold exists. Floyd LJ said that “Where there is some overall similarity, even faint, then it is necessary to carry out the global assessment, taking account of all relevant circumstances”…'it is overall similarity which counts.'
No likelihood of confusion for SCRABBLE vs SCRAMBLE: it is not surprising that the Court of Appeal overturned the trial judge's ruling that SCRABBLE and SCRAMBLE were not similar. However, it is interesting that notwithstanding the degree of similarity between the two, the Court held that there was no likelihood of confusion (even though Zynga was using its signs in respect of electronic games, which were directly covered by Mattel's marks). Floyd LJ said that the principal reason for this finding was that 'the extent of side by side use [of mark and sign] would be expected to have produced far more abundant evidence of confusion by the date of trial.' It will be interesting to see whether the Court of Appeal's approach is applied in subsequent cases, or whether this finding will be confined to its specific facts.
The authors, Ben Lyons and Georgina Shaw are part of Burges Salmon's IP litigation team led by Jeremy Dickerson.