The Court of Appeal has held that Zynga’s electronic game name ‘SCRAMBLE’ also known as ‘SCRAMBLE WITH FRIENDS’ did not infringe Mattel’s SCRABBLE community trade marks (“CTMs”) although it did infringe Mattel’s SCRAMBLE CTM.

The Court stated that the degree of similarity between SCRABBLE and ‘SCRAMBLE’ or ‘SCRAMBLE WITH FRIENDS’ was not sufficient to cause a likelihood of confusion, and nor did they take unfair advantage of, or cause detriment to, the reputation of SCRABBLE (JW Spear & Sons Ltd & Others v Zynga Inc [2015] EWCA Civ 290).

What?

The Claimant Mattel brought CTM infringement (under Articles 9(1)(a)-(c) of the CTM Regulation (“CTM Reg”)) and passing off proceedings against the Defendant, Zynga, to prevent it from selling an electronic game called ‘SCRAMBLE’ also known as ‘SCRAMBLE WITH FRIENDS’, as it infringed Mattel’s SCRAMBLE and SCRABBLE CTMs. Scrabble is a well-known board game, first released in the EU in 1954. Scramble was launched by Zynga in 2007, initially via Facebook and Zynga is described as the world’s biggest social gaming company.

In 2013 the High Court held that Zynga had not infringed Mattel’s SCRAMBLE word mark on the grounds that it was invalid or liable to be revoked because it was descriptive of the goods for which it was registered and had become the common name in the trade for word games (under Art. 7(1)(c)-(d) and Art. 51(1)(b) of the CTM Reg).

The High Court also held that there was no similarity between Zynga’s sign and Mattel’s SCRABBLE marks, but did find that Zynga’s use of a stylised ‘M’ in its SCRAMBLE WITH FRIENDS logo meant that on a ‘quick glance’ it looked like a ‘B’ and was liable to lead to confusion with Mattel’s SCRABBLE marks.

Both parties appealed, and the Court of Appeal reversed the ruling of invalidity/liability to revocation for Mattel’s SCRAMBLE and ruled that it was indeed infringed by Zynga’s ‘SCRAMBLE’ and ‘SCRAMBLE WITH FRIENDS’. However, the Court of Appeal held that Zynga’s marks did not infringe Mattel’s SCRABBLE CTMs, albeit through different reasoning to the High Court.

So what?

The decision highlights the latest approach taken by the Courts for determining CTM infringement.

In considering the appeal, the Court of Appeal applied the following questions:

  • Can a court rely on contextual matter extraneous to a trade mark when assessing the likelihood of confusion on the part of the public?
  • Is there a threshold of similarity before the Court must consider the likelihood of confusion?
  • Is SCRAMBLE merely descriptive?

The Court then went on to consider whether Mattel’s SCRAMBLE CTM was infringed, and then whether its SCRABBLE CTM was infringed, by the use of ‘SCRAMBLE’ and ‘SCRAMBLE WITH FRIENDS’.

In relation to the first question, Mattel submitted that the Court should take into account matter which had been “routinely and uniformly used in association with the mark” (here the word SCRABBLE), thus extending the global appreciation principle set out in Specsavers International Healthcare Ltd v Asda Stores Ltd. This context included the use of game tiles, numbers, premium word scores and the background colour of “woodland green”.

The Court rejected that submission by holding it was sufficient to effect a comparison between the marks as they appear on the register with the signs as they would appear in use to the average consumer, and that Mattel sought to extend the global appreciation principle too far.

The Court then held there is no minimum threshold of similarity that a mark must meet before it is required to assess likelihood of confusion under Art. 9(1)(b) of the CTM Reg. If an average consumer would perceive no overall similarity, then a Court does not have to consider the likelihood of confusion on the part of the public, as Art. 9(1)(b) of the CTM Reg is conditional on the existence of some similarity. If, on the other hand, an average consumer would perceive some overall similarity, however faint, the Court must carry out the global appreciation test expounded in Specsavers for the likelihood of confusion, taking into account any enhanced reputation or recognition of the registered mark in question.

Zynga went on to allege that the SCRAMBLE CTM consisted of a common word in English meaning: to move with urgency or panic; to struggle eagerly or unceremoniously for possession of something; and to get or gather something with difficulty or in irregular ways (a ‘rushed activity meaning’). Zynga also alleged that ‘scramble’ had been commonly and extensively used by third parties before and after 2007 (the date of registration of the CTM) for a range of physical and electronic board games where the user is required to make one or more words from scrambled letters (a ‘jumbled letters meaning’).

The Court reviewed the evidence of use of ‘scramble’ in 2007 put forward by Zynga, and held that an average consumer would not immediately understand ‘scramble’ to mean a word game which involved a race against time and therefore the rushed activity meaning was not a characteristic of SCRAMBLE. Nor could Zynga establish extensive or common use in the EU and thus the jumbled letters meaning of scramble was not a characteristic of SCRAMBLE either. Although there was quite a degree of descriptive allusion in the SCRAMBLE mark, its impact was not towards the descriptive end of the spectrum that would have made it unregisterable under Art. 7(1)(c) of the CTM Reg.

In addition, the evidence highlighted above did not come near to establishing that there was any customary use or established practice of the trade relating to the word ‘scramble’ as at 2007. Therefore the SCRAMBLE mark was not invalid or liable to be revoked under Art. 7(1)(d) of the CTM Reg either.

Zynga also failed to establish that SCRAMBLE was a common name in the EU for a game and the Court therefore reversed the lower Court’s decision and held that Mattel’s SCRAMBLE mark was therefore valid and not liable to be revoked under Art. 51(1)(b) of the CTM Reg. 

Infringement of the SCRAMBLE CTM

As the Court had held that the SCRAMBLE CTM was valid, it considered whether the mark had been infringed under Article 9(1)(b) of the CTM Reg. The Court held that the goods registered under the mark and those used by Zynga’s ‘SCRAMBLE’ were identical. Confusion was not just likely but inevitable, and the addition of the words WITH FRIENDS by Zynga was not adequate to avoid confusion.

Infringement of the SCRABBLE CTMS

The Court noted that the SCRABBLE CTM and ‘SCRAMBLE’ were of the same length differing by only a single letter in the middle, therefore there was a relatively high degree of visual similarity, as well as of phonetic similarity, which would be apparent to the average consumer. In addition, the Court held the two words were interchangeable in some, but not all contexts, therefore there was a moderate degree of similarity between conceptual meanings which would be less obvious to the average consumer. Therefore there was a moderate degree of overall similarity between the mark and sign.

As the Judge in the lower Court had failed to conduct a prima facie assessment of the trade mark against the sign, it entitled the Court of Appeal to perform a global assessment as to whether there had been a likelihood of confusion on the part of the public.

The Court held that the enhanced distinctive character of SCRABBLE was an important factor to take into account because it meant that the average consumer was used to seeing the mark in the context of games.

The Court reviewed evidence in the form of Tweets and iTunes reviews where users had mistakenly downloaded or played ‘SCRAMBLE’ thinking that it was SCRABBLE. However the Court stated that it would expect to see far more abundant evidence of confusion by the date of the trial, and so held that there was no infringement under Art 9(1)(b) of the CTM Reg.

To prove infringement under Art 9(1)(c) of the CTM Reg Mattel needed to show that use of the word ‘SCRAMBLE’ took unfair advantage of or was detrimental to the distinctive character or repute of the SCRABBLE CTM. The Court had not been shown evidence of a change in the economic behaviour of an average consumer or serious likelihood of such a change occurring in the future, and did not find infringement. The Court also reversed the decision that the stylised ‘M’ in Zynga’s ‘SCRAMBLE WITH FRIENDS’ logo meant that on a ‘quick glance’ it looked like the ‘B’ in the SCRABBLE CTMs, as this was not reflected in the available evidence of confusion.

In conclusion, this decision affirms (although it does not extend) the contextual point made in Specsavers. It may also be considered surprising to some that no infringement was found of the SCRABBLE CTM, given the oral and visual similarities with SCRAMBLE, as well as the use of both in relation to electronic games. Available evidence of confusion (or rather, lack thereof) seems to have played a key part.