Zynga, the world’s largest app-developer has scored a win
against the owner of the SCRABBLE brand. This case brings up
several interesting points about international trade-mark
protection in the era of apps.
The well known SCRABBLE® brand is a registered trade-mark
owned by different owners in different parts of the
world. Hasbro Inc. owns the intellectual property rights in
the U.S.A and Canada. In the rest of the world, the brand
is owned by J.W. Spear & Sons Limited, a subsidiary of
Mattel Inc. Mattel is not affiliated with Hasbro - in fact, the two
companies are long-time rivals.
In JW Spear v.
Zynga, a UK court has decided that the use
of the SCRAMBLE brand by Zynga for its word-based app
game does not infringe the SCRABBLE trade-mark in the UK, nor
does it constitute passing-off. However, the court did
consider Zynga’s SCRAMBLE logo design (above left)
to constitute an infringement, since the stylized M appears at
first glance to resemble a letter B. A few interesting points on
this long-running battle:
As we’ve seen in other IP disputes covered by
ipblog, this litigation is part of a wider dispute in multiple
jurisdictions, including France and Germany.
Mattel was chastised by the court for its delay in responding
to Zynga’s earlier use of the SCRAMBLE mark, in late 2007.
This delay influenced the court’s conclusion that Mattel did
not truly perceive SCRAMBLE to be a threat to the SCRABBLE mark.
This in turn influenced the court’s opinion that the public
would not be confused by the use of the 2 marks.
Mattel’s delay was likely caused by the efforts
of the parties to negotiate a license agreement to produce a
physical board-game version of the
SCRAMBLE app. The litigation followed a break-down
in negotiations, when Zynga concluded a deal with Mattel’s
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).