Scrabble wins appeal in Scramble squabble

At first instance all but one of Mattel's claims were dismissed, but the court held that use of the word SCRAMBLE with a stylised 'M', could "on a quick glance" lead to confusion with the mark SCRABBLE.

An earlier word mark for SCRAMBLE, owned by Mattel, was also held to be invalid/revoked as being descriptive and/or generic (otherwise Zynga's use would have infringed it). Both sides appealed.

Mattel scores in Court of Appeal

The Court of Appeal largely ruled in Mattel's favour. It felt that the judge at first instance had erred by not properly applying the jurisprudence and guidance developed over many years and handed down by the Court of Justice of the European Union (CJ). Accordingly it felt able to disagree with his findings.

Context of use

Mattel had argued that the context in which it had used the SCRABBLE mark (eg, in association with tiles, numbers, the concept of premium word scores, background colour) was relevant to the assessment of infringement. The court disagreed, holding that only very limited extraneous matter could be taken into account (following the Specsavers case, reported here: http://www.dyoung.com/article-specsaversvasda0913, which had limited such extraneous matter to the use in colour of a mark registered in black and white).

Minimum threshold of similarity

The Court of Appeal also considered whether a minimum threshold of similarity between two marks was required before a court could consider there to be a likelihood of confusion. The trial judge had (perhaps surprisingly) held that there was no confusion between the words SCRAMBLE and SCRABBLE. The Court of Appeal reviewed a number of CJ decisions and held that no such minimum threshold existed. Rather it is overall similarity that matters, taking all relevant circumstances into account.

SCRAMBLE mark restored

The trial judge had held the SCRAMBLE mark to be descriptive or generic, noting that it described what was required in Zynga's game ('scrambling' for words from letters), and had also been used by third parties for similar word games. The Court of Appeal disagreed. Although there was a degree of descriptive allusion, overall it felt that SCRAMBLE was not so descriptive as to be unregistrable, and certainly not generic in the sense of being the customary/established means of referring to word games in the European Union. The validity of Mattel's earlier SCRAMBLE mark was therefore restored.

The Court of Appeal agreed that the marks SCRAMBLE and SCRAMBLE WITH FRIENDS were confusingly similar. Therefore, since Mattel's SCRAMBLE mark was now valid again, Zynga's use infringed it.

Likelihood of confusion and unfair advantage

As regards infringement of the SCRABBLE marks, the Court of Appeal held that the trial judge's finding that SCRABBLE and SCRAMBLE were not similar "cannot be supported". There was obvious visual, phonetic and even conceptual similarity between the marks. Nevertheless, the Court of Appeal agreed with the trial judge that (even with a finding of similarity between the marks), there was no likelihood of confusion.

Much of the evidence relied on by Mattel to prove confusion had consisted of consumers' comments on the Internet in tweets and/or game reviews. Comments such as "I thought I read Scrabble but is scramble lol. Downloaded it and skipped tutorial thinking they were the same thing [sic]" and "I am terrible at scrabble with friends" were not sufficient to sway the Court of Appeal to find a likelihood of confusion. It was persuaded that there had been a lot of side-by-side use of the marks, and that Zynga's use of SCRAMBLE had been extensive and pervasive. Accordingly, the court felt that if there was a real likelihood of confusion, it would have manifested itself in far more abundant evidence of actual confusion – the court did not think that this had been shown. Therefore, the court held that the degree of similarity between SCRABBLE and SCRAMBLE was not sufficiently great to give rise to a likelihood of confusion.

The court also held that there was not sufficient evidence of unfair advantage/detriment for Mattel's claim relating to reputation of the SCRABBLE mark to succeed.

Finally, the Court of Appeal held that there was no infringement by Zynga by its use of the SCRAMBLE logo with the stylised 'M' (which, Mattel had argued, resembled a twisted 'B'). If consumers were reading the 'M' as a twisted 'B', the court felt this would have been reflected in the evidence, which was not the case.

Overall, therefore, this was a win for Mattel.

In short

The court's findings as regards the lack of likelihood of confusion (despite relatively powerful evidence that consumers commonly confused the marks, and the limited visual and phonetic differences between them) reinforces the notion that when considering infringement, the court will look at the overall context in which the allegedly infringing mark has been used.

The extent of side-by-side use of allegedly conflicting marks, and how pervasive a defendant's use has been, may well be important.

Case details at a glance

Jurisdiction: England and Wales
Court: England and Wales Court of Appeal (Civil Division) on appeal from the High Court of Justice
Parties: J W Spear & Sons Ltd, Mattel Inc and Mattel U.K. Limited v Zynga INC
Citation: [2015] EWCA Civ 290
Date: 27 March 2015
Full decision: http://dycip.com/scramblevscra...