J.W. Spear & Sons Ltd & Ots ('Mattel') v Zynga, Inc* (Peter Smith J;  EWHC 3348 (Ch); 01.11.13)
Mattel were the owners of all intellectual property rights associated with the well-known game SCRABBLE outside the US and Canada. Zynga was a leading app developer. It launched its game (the 'Scramble App'), which was available for use on Apple and Android devices in January 2012. Images of the Scramble App are shown below:
Click here to view mark.
Mattel brought an action for infringement of the following (i) the word mark SCRABBLE; (ii) a figurative mark including the word SCRABBLE; and (iii) the word mark SCRAMBLE. All three were registered as CTMs, inter alia, in respect of computer games in Class 9 and toys, games and playthings in Class 28. Mattel also claimed that Zynga's game constituted passing off.
Peter Smith J found that there was no evidence to enable him to decide whether or not there was a likelihood of confusion under Article 7(1)(b) or deception for the purpose of passing off:
- He placed no weight on survey evidence adduced by Mattel because no respondents to the surveys had been called to give live evidence and the evidence which was adduced was not considered of 'real value' (the Judge referring to Interflora v Marks & Spencer);
- He placed no significant weight on Twitter posts, iTunes reviews and extracts from Zynga’s customer service database, which were adduced by Mattel under a Civil Evidence Act notice because they constituted unidentified unchallengeable hearsay.
- Although not determinative, he found that evidence that Mattel knew of Zynga's use of Scramble for many years (although only at middle order executive level) and had taken no action; his conclusion being that Mattel did not perceive the use of the word 'Scramble' as an infringement of its rights.
As a consequence, the Judge made his decision on judicial instinct and held that Zynga's digital word game 'Scramble' (according to Mattel) or 'Scramble With Friends' (according to Zynga) did not infringe Mattel's CTMs for SCRABBLE and did not constitute passing off. However, the game's logo was written in such a way that the letter 'm' of Scramble was positioned on its side and looked confusingly like a 'b', and therefore passed off and infringed the SCRABBLE CTMs.
The Judge also found that, if valid, Mattel's SCRAMBLE CTM would have been infringed by the name 'Scramble'. However, he found that 'Scramble' was descriptive of Zynga's game; it was an ordinary English word commonly used in word games and, in his view, had become a common name for such games. The SCRAMBLE CTM was therefore held invalid under Articles 7(1)(c) and (d).
Finally, the Judge held that the addition of 'With Friends' would not have assisted Zynga if he had not found 'Scramble' to be descriptive.