A recent UK court decision involving the trade mark Scrabble is of interest to us in South Africa because it suggests that proof of actual confusion - as opposed to a mere likelihood of confusion - is more important than we sometimes like to think.

I refer to a decision of the UK Court of Appeal in the case of JW Spear & Sons Ltd v Zynga.The facts were that JW Spear (part of the Mattel group) has trade mark registrations for the words Scramble and Scrabble – both registrations cover board games as well as electronic games. Mattel claimed that its trade mark registrations had been infringed by electronic games giant Zynga, which used, in relation to a game not dissimilar to Scrabble, the trade mark Scramble, as well as a logo trade mark comprising the phrase Scramble With Friends, in which the letter 'm' of the word 'Scramble' was highly stylised and arguably looked a bit like a letter 'b' on its side.

The court dealt with a number of issues. One issue was whether the plaintiff in a trade mark infringement case (Mattel in this instance) can rely on extraneous factors when it comes to considering the likelihood of confusion. Mattel wanted the court to consider that it uses tiles and numerals as well as a certain colour combination in conjunction with its trade mark Scrabble.

Conventional wisdom has it that in trade mark infringement cases it's simply a matter of comparing the registered trade mark with what the defendant is using. However, in a recent decision of the Court of Justice of the European Union (CJEU), Specsavers v Asda, the court held that if a certain colour combination has been used with the registered trade mark (and if the public associates that colour combination with the trade mark) then there's no reason why that factor shouldn't be considered by the court. So the UK Court of Appeal held that, although extraneous factors (which it described as 'matter which has been routinely and uniformly used in association with the mark' ) will generally not be considered, a colour or colour combination can be. This finding is significant, but it's not the aspect of the decision I want to concentrate on in this article.

The aspect I do want to focus on is this: the court went on to hold that the trade marks Scramble and Scramble With Friends were similar to the trade mark Scrabble, but that there was no likelihood of confusion. Why? Because the court felt that, if confusion was likely, there would have been proof of actual confusion. The court said this: 'The principal reason for that conclusion is that the extent of side-by-side use would be expected to have produced far more abundant evidence of confusion by the date of trial'. So the failure to show actual confusion destroyed the argument that there was a likelihood of confusion.

In South Africa, the accepted view is that proof of actual confusion isn't necessary in order to establish a likelihood of confusion. Our courts keep repeating this but it is clear that the courts do like proof of actual confusion. This becomes very apparent if we look at a few recent decisions.

In the 2014 Supreme Court of Appeal (SCA) case of Shimansky v Browns, the issue was whether the jewellery trade marks Evolym and Evolve would be confused. The court held that they would not because of the conceptual differences, and it made specific mention of the fact that there was no proof of actual confusion. In the 2014 Western Cape High Court decision of Lucky Star v Lucky Brands, the issue was whether the trade marks Lucky Star and Lucky Fish would be confused. The court held that they wouldn't because the common element (the word 'lucky') was a weak adjectival word. It also saw fit to make the point that there was no proof of actual confusion.

In the 2014 SCA decision of Pioneer Food v Bothaville Millings (a passing-off case rather than a trade mark infringement case), the court said this: 'Although such evidence is not essential to prove a likelihood of confusion... it can, if it is present, tip the balance in one direction and, if it is absent, tip it in the other.' One case that perhaps bucked the trend was the 2014 SCA decision of Nestle v Iffco, where the issue was whether a 3D trade mark registration for the shape of the Kit Kat chocolate bar had been infringed by the use of a similar-shaped chocolate bar. Here the court held that there was a likelihood of confusion, and it said that the fact that there was no proof of actual confusion mattered not.

Back to the Scrabble case. If you're thinking that a grave injustice took place, you'll be pleased to hear that the court did find that Zynga had, through its use of Scramble and Scramble With Friends (logo), infringed one of Mattel's trade mark registrations, the one for Scramble, a registration that the court held was valid because it rejected Zynga's argument that the word 'scramble' had become generic in the EU. So just as well that Mattel had registered Scramble in addition to Scrabble!

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