Following a recent defeat in the Court of Appeal in relation to the validity of its three-dimensional tile mark (for further details please see "Cadbury's purple, Scrabble's tile: mark distinctiveness not enough"), Mattel has suffered yet another blow as its claims for trademark infringement and passing off against Zynga have been rejected by the High Court and its SCRAMBLE mark has been declared invalid.(1)
In March 2012 Mattel, the well-known toy and game manufacturer and owner of the SCRABBLE mark, issued proceedings in the High Court for passing off and trademark infringement in respect of Zynga's online electronic game Scramble With Friends.
Mattel contended that Zynga's Scramble With Friends game (launched in 2012) infringed its Community trademarks for the words SCRABBLE and SCRAMBLE. In view of Mattel's substantial goodwill (it was reported in 2010 that 53% of all UK households owned a Scrabble game), Mattel argued that Zynga's use of the signs 'Scramble' and 'Scramble With Friends' constituted passing off.
In response, Zynga sought to invalidate Mattel's SCRAMBLE mark on the grounds of distinctiveness, descriptiveness, common usage, bad faith and genericism. The bad-faith allegation was withdrawn at the time of the closing submissions.
The judge concluded that the word 'Scramble', whether on its own or with the words 'With Friends', did not infringe Mattel's trademarks. The judge also dismissed Mattel's passing-off claim, save that he thought Zynga's use of the 'Scramble With Friends' logo (with the letter 'm' appearing on its side) had the propensity to confuse.
Additionally, the judge declared that Mattel's Community trademark for SCRAMBLE was invalid, as it "accurately describes what is required in the game namely a scramble for words made up by letters in a fixed period of time". Alternatively, the judge said that 'Scramble' is an ordinary English word commonly used in word games.
In reaching his decision, the judge made two pertinent points.
In line with the recent Interflora decisions, and in particular the Court of Appeal guidelines for survey use in trademark infringement cases, the judge noted that witness evidence obtained through surveys must be of real value in order to be adduced. The judge emphasised the difficulty in relying on surveys in passing-off and trademark claims in light of these guidelines – namely, that they would need to represent deception or confusion of a substantial number of members of the public. In this case, Mattel had been granted permission to adduce survey evidence only as they had done before the Interflora cases.
Mattel had conducted point-of-sale and icon consumer surveys that it relied on as statistically valid surveys and produced an independent expert to design and oversee the conduct of the surveys. The independent expert gave evidence in court; however, none of the individuals who were involved in conducting or answering the survey were called as witnesses. The judge considered the absence of those witnesses fatal to the surveys' evidential worth.
Notably, the evidence from Twitter that Mattel relied on (in the form of a Civil Evidence Act notice) was rejected on the basis that "untested evidence taken by third parties who themselves do not give evidence will be given little weight when those statements cover contentious matters".
It would appear that Mattel's conduct in the lead-up to the litigation was fatal to its case. It transpired during the hearing that Mattel had known about but taken no action at all in respect of Zynga's four earlier online versions of its game (first launched in 2007), all of which had 'Scramble' in their title. In fact, Mattel had been negotiating with Zynga for a licence to make board game versions of Zynga games (a point the judge found "startling" in the context of the later litigation). It was only when Zynga rebuffed Mattel and instead concluded a deal with Hasbro (a Mattel competitor) that Mattel took action against Zynga.
This is one of those cases where the claimant's prospects of success look reasonable on paper, but in the real world – when the alleged infringing use is viewed in context – the reality is somewhat different. Indeed, the judge remarked on the differences between a traditional board game, such as Scrabble, and an online word game which requires instant action and instant gratification.
It is also interesting that despite Zynga not having relied on waiver or estoppel defences, the judge nonetheless concluded that as a matter of evidence, Mattel's "molasses-like speed" in taking action and its lack of a clear explanation for the sudden change in attitude meant that Mattel did not believe that Zynga's games were a threat or infringement of Mattel's rights and was therefore fatal in any event. Brand owners should be aware that previous conduct could well come back to haunt them. That said, with Mattel set to appeal, this long-running battle looks set to continue.
For further information on this topic please contact Paul Joseph or Ben Mark at RPC by telephone (+44 20 3060 6000), fax (+44 20 3060 7000) or email (firstname.lastname@example.org or email@example.com). The RPC website can be accessed at www.rpc.co.uk.
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(1) J W Spear & Son Ltd v Zynga Inc  EWCA Civ 3348.