UK: Mattel's Lack Of Action Held To Be 'Destructive' Of Its Case Against Zynga

Last Updated: 14 January 2014
Article by Leighton Cassidy

On 1 November 2013, the Honourable Mr Justice Peter Smith handed down his judgment in the case of J.W. Spear & Sons Ltd Mattel Inc v Zynga Inc [2013] EWHC 3348 (Ch), finding Zynga did not infringe Mattel's Scrabble trade marks.

Overview

J.W. Spear & Sons own the rights to produce and market the board game Scrabble outside North America and they are owned by American toy manufacturing company Mattel, Inc (together "Mattel"). Zynga is a developer of social games for mobile platforms including Farmville, Zynga Poker and Words With Friends.

This dispute related to Zynga's mobile app game Scramble With Friends, which is similar to Boggle and involves players finding as many words as possible in a jumbled 4x4 grid of letters by connecting adjacent letters within two minutes.

Mattel alleged that Scramble With Friends and the Scramble With Friends logo infringed the following trade marks:

  • CTM registration no. 401737 SCRABBLE in Classes 9, 28 and 41;
  • CTM registration no. 401489 SCRABBLE Device in Classes 9, 28 and 41;
  • UK trade mark registration no. 2154349 for a three dimensional tile mark in Classes 9, 28 and 41; and
  • CTM registration no. 6223077 SCRAMBLE in Classes 9, 28 and 41.

Mattel also alleged passing off, although there was no passing off allegation in relation to the "get up" of the game, only in relation to the words, the use of tiles and the Scramble icon. However, a summary judgment of 28 November 2012 found that the tile registration was invalid as it was not a "sign" in line with Article 2 of the Trade Mark Directive. An appeal by Mattel was dismissed by the Court of Appeal in October ([2013] EWCA Civ 1175).

Zynga counterclaimed for a declaration that the SCRAMBLE trade mark was invalid on the grounds of lack of distinctive character, descriptiveness, common usage, bad faith and revocation for genericism (they have also applied to the OHIM for an invalidity declaration). Proceedings are also ongoing between the parties in France and Germany.

Facts

Zynga has been producing electronic games since 2007 with its first version of the disputed game launched as Scramble around late 2007. Scramble With Friends is the fifth edition of the game and was launched in January 2012. The Scramble With Friends logo consists of rectangular tiles containing letters and numbers, similar to Scrabble tiles. Further, the "m" in Scramble is stylised and on a quick glance looks similar to a letter "B" on it's side. Mattel first produced an electronic version of Scrabble around late 2009.

Mattel had been aware of the earlier versions of Scramble but had not made any complaints, nor was it asserted in the proceedings that any of the earlier games infringed or passed off Mattel's trade marks. In his witness evidence, Mattel's Vice President of global marketing stated that although he was "furious" upon finding out about the Scramble With Friends app in 2012, earlier versions of the Scramble app "did not register with the management". Another Mattel witness commented that in relation to earlier forms of Scramble With Friends she "did not see the need or it did not call out to me to be similar enough to Scrabble to warrant a conversation with the legal department".

Significantly, Mattel had pitched to Zynga for a licence to make physical versions of their games in January 2012. This included making a physical version of Scramble With Friends, the game which Mattel would later allege was in breach of their rights. It was only when Hasbro (rights holder for Scrabble in North America) won the licence that Mattel initiated infringement proceedings. In his evidence Mattel's Vice President of global marketing accepted that it was highly unlikely that proceedings would have been brought had they won the licence and that, in reality, Mattel was only interested in producing board games rather than apps.

However, in internal e-mails, Zynga had acknowledged that there was a possibility that Scramble may be confused with Scrabble.

Decision

In Smith J's view, the lack of activity in relation to the previous four versions of the game was destructive of Mattel's case. He found that Mattel internally well knew of Zynga's use of the word SCRAMBLE for many years but had decided to do nothing about it. No explanation was given for this but the conclusion drawn was that Mattel did not perceive use of the word SCRAMBLE as an infringement of their rights. This view was supported by Mattel's lack of action prior to the proceedings in relation to a large number of other apps containing SCRAMBLE. Indeed, Mattel had brought proceedings against other games such as Scrabulous, which suggested that in not bringing proceedings earlier, Mattel had been unconcerned about the use of the word SCRAMBLE.

It followed that prior to 2012 Mattel did not perceive there to be any confusion by anyone who used the word SCRAMBLE, and that the only reason they pursued Zynga was because of the failure to secure the board games licence. Further, Smith J found that whilst people in Zynga thought they may benefit by using SCRAMBLE but were sailing close to the wind, they did not intend to deceive in a way which was actionable.

Regarding infringement of the SCRABBLE marks, in his view Smith J had no clear evidence to assist him in determining whether there was a likelihood of confusion, either on the basis of a substantial proportion of the relevant public potentially being deceived (passing off) or whether there is a potential for deception of the average consumer who is deemed to be reasonably well informed and reasonably observant and circumspect (trade mark infringement). In particular, he stated that the survey evidence provided by Mattel held no evidential weight whatsoever, nor the large amounts of documentary evidence provided by Mattel. However, his view was that Mattel did not believe there was any realistic prospect of confusion between the words SCRAMBLE and SCRABBLE. Therefore, he concluded that although the SCRAMBLE element of the logo looked similar to SCRABBLE at first glance, the word SCRAMBLE with on its own or with "With Friends" did not infringe the SCRABBLE trade marks as it is not similar or likely to cause confusion.

In relation to infringement of the SCRAMBLE mark, there was no doubt that the use of SCRAMBLE prima facie infringed Mattel's rights. However, in the view of Smith J, the word SCRAMBLE is an ordinary word, descriptive of the game and which had become a common name for such games. Accordingly the SCRAMBLE CTM was held to be invalid on the grounds of Article 7(1)(c) and (d). For this reason there was no infringement.

Comment

There are two main lessons to be taken from this case. Firstly, infringement action should be taken as soon as a trade mark owner is aware of a potentially infringing mark as adverse inferences may be drawn from a lack of action when assessing the likelihood of confusion. Secondly, this case once again highlights that unless survey evidence is likely to be of real value and that likely value justifies the cost, it will not be given any evidential weight by the court.

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.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
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).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.