Trademark - Infringement
W Spear & Sons Ltd and other companies v Zynga Inc: (ChD) (Mr Justice Henderson): 4 May 2012
The claimant companies were members of a group of companies (the group), which owned the Scrabble brand in Europe and the rest of the world, with the exception of the US and Canada. The group owned four registered community or UK trademarks in the word marks ‘Scramble’ and ‘Scrabble’, the device mark ‘Scrabble’ and a ‘Tile’ device mark.
The defendant company was the world’s largest social gaming company and a leading developer of applications in the area. In January 2012, the defendant launched a new game called ‘Scramble with Friends’ for the Apple iPhone and iPad market. The claimants commenced proceedings for infringement of the registered community or UK trademarks. The claimants’ witness evidence provided that they planned to launch a new game under the Scramble mark alone between December 2012 and February 2013 (the new product).
The claimant sought an expedited trial on the grounds that the launch of the new product would be greatly prejudiced if it had to compete on the market with the defendant’s ‘Scramble with Friends’, and there would be a risk of serious and unquantifiable damage to the existing Scrabble brand in its digital version if it too had to compete with ‘Scramble with Friends’. It fell to be determined whether the trial should be expedited. The application would be dismissed.
It was settled law that a case should be granted expedition only on the basis of real, objectively viewed, urgency (see  of the judgment). In the circumstances, the instant case had simply not come near affording the kind of cogent justification that would be needed to jump the normal place in the queue. Trademark cases would not occupy any kind of special position and there would not be a presumption in favour of granting expedition in such cases. A strong enough case had not been made out for expedition (see ,  of the judgment).
Adrian Speck QC (instructed by Bird & Bird) for the claimants; Charlotte May (instructed by Olswang) for the defendant.