UK: Unscrambling The Trial Judgment Of Mattel v Zynga In The Court Of Appeal - A Case Update

Last Updated: 7 August 2015
Article by Leighton Cassidy and Caroline Bass

This article follows Leighton's previous post ( from January 2014) which summarised and commented upon Mr Justice Peter Smith's High Court judgment which held that Zynga did not infringe Mattel's SCRABBLE trade marks.


By way of reminder, JW Spears & Son own the rights and produce and market the board game Scrabble and is itself owned by US toy manufacturing company Mattel (collectively, "Mattel"). Zynga develops apps for mobile platforms.

The dispute related to Zynga's mobile app Scramble with Friends, which requires its players to find as many words as possible within a jumbled grid of letters within a short space of time. Mattel alleged that Scramble with Friends infringed its registered rights:

Smith J found that Mattel's CTM SCRAMBLE had been infringed by Zynga's use of SCRAMBLE but was invalid and/or liable for revocation in any event by virtue of its descriptive nature (Article 7(1)(b)) and the fact that it had become a common name in the trade for a product in respect of which it was registered (Article 51(1)(b)).

As regards Mattel's claims of infringement of its SCRABBLE CTMs, these were dismissed by Smith J who somewhat controversially concluded that they were not similar to the signs SCRAMBLE or SCRAMBLE WITH FRIENDS and as such Mattel were unable to successful make out a case of likelihood of confusion under Article 9(1)(b). The only exception to this finding related to Zynga's use of a stylised "M" in its SWF logo which the judge considered liable to confuse the relevant public when viewed "on a quick glance."

In reaching this decision, Smith J relied heavily on the actions and inactions of Mattel and its employees; in particular the fact that Mattel allowed several earlier versions of the SCRAMBLE app to exist before deciding to take action and that Mattel had pitched to Zynga in relation to its wider portfolio which included the SCRAMBLE app.

Smith J also brutally dismissed Mattel's survey evidence in relation to which Mattel's request to appeal was declined.

The Grounds of Appeal

Both sides appealed Smith J's judgment. Mattel appealed against the finding of non-infringement (and passing off) of its CTMs. It also appealed against the Judge's finding of invalidity/liability for revocation of the SCRAMBLE mark. Mattel's appeal was primarily based on the following:

  • That the judge's finding as regards no similarity between the SCRABBLE marks and the SCRAMBLE and SCRAMBLE WITH FRIENDS signs were unsupportable.
  • More particularly, that the judge erroneously applied a "minimum threshold of similarity" test and as such did not conduct the objective assessment of whether the marks were sufficiently similar to give rise to a likelihood of confusion. This included a failure to consider the way that Mattel had used the mark in terms of contextual matter extraneous to the mark itself (relying on Specsavers International Healthcare Ltd v Asda).
  • That the judge allowed too much weight to be given to the fact that Mattel (i) failed to take action as regards the earlier versions of the allegedly infringing game; and (ii) had previously pitched to Zynga to make physical versions of Zynga's games.
  • That the judge failed to deal with its claim under Article 9(1)(c) at all and should have done given its non-reliance on a finding of likelihood of confusion.

Zynga cross-appealed against the judge's finding of infringement and passing off as regards Zynga's use of the stylised "M" in the SWF logo.

The Appeal was heard on 18-20 November 2014 by Lord Justices Patten, Tomlinson and Floyd. Floyd LJ delivered the leading judgment with which Patten LJ and Tomlinson LJ agreed. Judgment was handed down on 27 March 2015.

General observations on the Trial Judgment

Floyd LJ did not go to any great lengths to reveal his dissatisfaction with the way in which Smith J reached his final decision in the lower court. He openly criticised the way that Smith J had focussed, "almost to the exclusion of everything else, on the attitudes and actions of the protagonists to the dispute". Floyd LJ recognised some force in the submissions made on behalf of Mattel that Smith J had "lost sight of the underlying exercise which the jurisprudence of the CJEU required him to undertake." (Para 123).

Whilst accepting that there was certainly scope for it, it was decided that a re-trial would not be in the best interest of either parties. Remittal was also considered but given that the relevant material was already before the Lord Justices, the Court of Appeal in the end elected to "consider it all as best we can" (para 125).

Appeal Findings

(i) Smith J's finding that SCRAMBLE CTM is invalid/ liable for revocation is reversed

Floyd LJ began by reversing the trial judge's finding as regards the validity and/or liability for revocation of the SCRAMBLE CTM. Again he criticised Smith J's assessment of this claim in that he failed to properly consider the arguments for invalidity as at the relevant date, i.e. in 2007 and his conclusion that the mark was "descriptive of the [Zynga] game" cannot be supported as at that point in time no such game existed. Smith J also failed to address the question of what the sign SCRAMBLE would immediately convey to the average consumer of the goods and services for which it was registered – "It is not enough to show that a particular game later accused of infringement has a characteristic which can be accurately described, with hindsight, by the sign." (Para 130).

Considering both the rushed activity meaning and the jumbled letters meaning of SCRAMBLE in turn, Floyd J concluded that whilst there remained some degree of descriptive allusion in the mark SCRAMBLE he did not consider it far enough "towards the descriptive end of the spectrum" for it to be deemed unregistrable under 7(1)(c). He also considered there to be nowhere near enough evidence to establish customary use or established practice under Article 7(1)(d).

As regards Smith J's finding that SCRAMBLE had lost its distinctive character by being used commonly in the trade by different traders as a generic name for the goods concerned, Floyd LJ also took issue, and agreed with Mattel's submissions that the judge did not sufficiently scrutinise the evidence advanced in support of the claim. Floyd LJ overturned this finding for, amongst other reasons, the fact that he himself remained unsure at the end of the appeal and even when writing the judgment what game or type of game the word SCRAMBLE is supposed to depict.

(ii) Infringement of the SCRAMBLE CTM

Floyd LJ agreed with Smith J's findings that the CTM SCRAMBLE and the sign SCRAMBLE were not only liable to be confused but that confusion was inevitable.

(iii) Infringement of SCRABBLE CTMS under 9(1)(b)

It was clear that by concluding that the self-evidently similar SCRABBLE and SCRAMBLE were dissimilar, Smith J had applied a threshold of similarity test. The Court of Appeal confirmed that, in accordance with the precedent handed down in L'Oreal v Bellure, this test is wrong in law. Zynga's claims that subsequent CJEU decisions (Ferrero, Kaul, Lufthansa Airplus and Riha Weser-Gold) had cast doubt on the principle laid down in L'Oreal, fell on deaf ears. Floyd LJ stressed that while these CJEU cases make the point that an overall finding of similarity of signs may well be precluded by virtue of significant dissimilarities as regards (a) visual; (b) aural; or (c) conceptual similarity, "it is the overall similarity that counts" (Para 59) and where there is a finding of overall similarity, however faint that similarity may be, a global assessment of similarity is required.

Having found that the SCRABBLE and SCRAMBLE were moderately similar (visually and phonetically very similar, with only a lesser degree of conceptual similarity), Floyd LJ conducted the requisite global assessment that had erroneously been absent from Smith J's trial judgment.

(a) The Global Assessment

In conducting this assessment, the Court identified the key factors in the context of the strength of each parties' respective claims.

He identified the following as weighing in Mattel's favour:

  • Identity between the goods for which the mark is registered and the alleged infringing goods (having legitimately disregarded known differences in gameplay);
  • The enhanced distinctive character of SCRABBLE and the fact that the average consumer is used to seeing/trained itself to see the mark in the context of games (although Floyd LJ rejected Mattel's submissions that contextual material extraneous to its SCRABBLE CTMs should be considered on the basis that it stretched the Specsavers principle that bit too far).
  • The fact that the product is free or relatively cheap and as such the consumer will pay less attention when purchasing it than if it were a more expensive item.

Weighing in Zynga's favour were the following points:

  • That whilst Zynga's claims that the mark was descriptive in the trade had been rejected, there nevertheless remained a certain degree of descriptive allusiveness which would weigh in favour of Zynga's argument that a relevant consumer would not mistakenly link the sign SCRAMBLE with the well-known SCRABBLE mark.
  • Equally, whilst SCRAMBLE sign had not become a common name in the trade for the game, the fact remained that users who searched for a game on the App Store or Google Play would be confronted with a variety of games using the name SCRAMBLE in some way.
  • That the method of purchasing apps is such that a consumer is able to examine each app carefully before purchasing even where the app is cheap or free.
  • The absence of weighty evidence showing actual confusion in the market despite the extent of contemporaneous, side by side use of the respective marks and signs.

Floyd LJ noted that but for Zynga's arguments (particularly as regards an absence of evidential proof of actual confusion), the Court of Appeal would have been inclined to conclude that there was a risk of confusion without needing to go further. However such a conclusion would not be supported without reference to the secondary evidence.

(b) Analysing the Evidence presented

Although Mattel's survey evidence was not before the Court of Appeal (having been rubbished by Smith J and Mattel being refused permission to appeal this particular finding), Floyd LJ still took the opportunity to make his views known on the difficulty of deploying such evidence successfully; namely, that it is extremely difficult, if not impossible, to reproduce a real life situation and that questions are inevitably posed in a way that is liable to distort the natural conclusions that an average consumer would ordinarily reach.

The remaining evidence before the Court of Appeal principally comprised third party reviews (from iTunes and Google Play) and other social media commentary. Floyd J disagreed with Smith J's outright dismissal of this evidence on that basis that it was mere "hearsay" and as such incapable of satisfactory levels of scrutiny. Whilst accepting the evidence's inherent limitations (significantly, the inability to cross-examine the numerous authors), Floyd J found a vast number of the numerous tweets (which inadvertently confused SCRABBLE and SCRAMBLE) to be compelling by virtue of their "unsolicited" nature.

Floyd LJ took little interest in the evidence that went to the actions or inactions of Mattel and its employees. He criticised Smith J's approach in erroneously equating one witness' view with that of the relevant consumer. He also failed to see any significance in Mattel's pitches for a licence from Zynga – whilst these pitches may have been inconsistent to Mattel's claims of infringement, they did little to advance Zynga's case as regards likelihood of confusion. In any event, Zynga had not pleaded acquiescence.

Despite Floyd LJ's very different (and unquestionably more objective) assessment of the evidence, he ultimately reached the same conclusion as Smith J as regards the infringement of the SCRABBLE CTMs:- "..although, as I have explained, I disagree with the judge's approach to the secondary material, looking at it as a whole, I am not persuaded that it gives sufficient support to Mattel's case to justify allowing the appeal on infringement of the SCRABBLE mark. The principal reason for that conclusion is that the extent of side by side use would be expected to have produced for more abundant evidence of confusion by the date of trial. The factors relied on by Zynga must, therefore, be sufficient in combination with the small difference between the mark and sign, to eliminate the risk of real confusion occurring amongst a significant proportion of the public." [Emphasis added].

As regards passing off, on the basis that neither side sought to distinguish this from their respective submissions as regards CTM infringement under 9(1)(b), Floyd LJ treated them the same and accordingly held that this claim had not been made out.

(iv) Infringement of SCRABBLE CTMS under 9(1)(c)

Floyd LJ dealt with Mattel's claim under 9(1)(c) quickly – he was not persuaded that there was sufficient evidence presented as to the requisite unfair advantage or detriment.


Floyd LJ's choice of words; that he lacked sufficient evidence to justify overturning the High Court's decision is perhaps enlightening and may suggest that had the same assessment been conducted in the High Court (without the weight of a previous judgment) the outcome may have been different. This is particularly so given the objective similarity (as regards signs and goods covered) and the unquestionable enhanced distinctiveness of the SCRABBLE marks.

Nevertheless, this judgment is a warning to trade mark owners seeking to claim infringement that, where there has been extended co-existence between their earlier rights and the allegedly infringing signs, abundant and compelling evidence of actual confusion will be required even where marks are on the face of it, self-evidently similar.

The judgment also serves as a helpful reminder of the proper assessment of similarity under 9(1)(b) and dispels any doubt that may have been cast on L'Oreal's rejection of a threshold of similarity approach.

Finally, the judgment suggests that whilst insufficient in this case, third party evidence extracted from online platforms and in particular from social media, can be treated as compelling (by virtue of its unsolicited nature) where it demonstrates actual evidence of confusion.

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

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (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

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’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.


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.


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 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.


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.


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.


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.


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

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

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

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