J.W. Spear & Sons Ltd and others v Zynga Inc: Court of Appeal, Civil Division: 27 March 2015

Infringement – Use of similar trade mark – Use of identical trade mark – Claimants controlling rights in ‘Scrabble’ game in European Union

The claimant companies (Mattel) controlled the rights in the well-known game ‘Scrabble’ in the European Union. Mattel sought to prevent the defendant (Zynga) from selling an electronic game called ‘Scramble’ or ‘Scramble with Friends’ (SWF) by asserting four Community trademark (CTM) registrations and the common law tort of passing off.

Of the three CTMs which were of relevance, two were for ‘Scrabble’ (in the form of a simple word mark and a logo respectively) and one was for the word ‘Scramble’, the latter being registered with effect from 2007. Following a trial, the judge dismissed almost all of Mattel’s claims. The exception related to Zynga’s use of a stylised letter ‘M’ in its SWF logo, which the judge held ‘on a quick glance’ was liable to lead to confusion with Mattel’s Scrabble CTMs.

In respect of the rest of the claims, he held that there was no infringement of Mattel’s two Scrabble marks under article 9(1) of Council Regulation (EC) No 207/2009 (on the Community trademark) (the Regulation), and no passing off by the use of Scramble or SWF.

He further held that, although Mattel’s Scramble mark was infringed, it was invalid and/or liable to be revoked, because it consisted of a sign which might serve in trade to designate a characteristic of the goods, had become customary in the language or in the bona fide practices of the trade, or had become the common name in the trade for a product in respect of which it was registered, pursuant to articles 7(1) and 51(1)(b) of the Regulation.

Mattel appealed against the judge’s findings of non-infringement and no passing off as well as from his finding of invalidity/liability to revocation of the Scramble mark. Zynga appealed against the judge’s finding of infringement and passing off by the use of a stylised ‘M’ in its logo (see [106] of the judgment). Zynga also maintained, by a respondent’s notice, that the judge had been wrong to find that the mark ‘Scramble’ was infringed by the sign ‘Scramble with Friends’.

Consideration was given to, among other things, the extent to which it was open to a national court, in a case like the present, to hold that the mark and sign were not similar at all, as a sort of threshold question, as opposed to considering whether the marks were sufficiently similar to give rise to a likelihood of confusion.

The court ruled:

(1) The court should assess the phonetic, visual and conceptual similarity of mark and sign and decide whether, overall, mark and sign would be perceived as having any similarity by the average consumer. If no overall similarity at all would be perceived, the court would be justified in declining to go on and consider the likelihood of confusion applying the global appreciation test, as article 9(1)(b) of the Regulation was conditional on the existence of some similarity.

Where the average consumer would perceive some overall similarity, however faint, the court had to go on to conduct the global appreciation test for the likelihood of confusion, taking account where appropriate of any enhanced reputation of recognition of the mark. In conducting the global appreciation test, the court had to take forward its assessment of the degree of similarity perceived by the average consumer between mark and sign (see [60] of the judgment).

L’Oreal SA v Bellure NV [2006] All ER (D) 39 (Oct) considered.

(2) Although there was quite a degree of descriptive allusion in the mark Scramble, its impact was not so far towards the descriptive end of the spectrum that it was unregistrable under article 7(1)(c) of the Regulation as of 2007. The case for invalidity under article 7(1)(d) was an even more difficult one. As of 2007 it was not possible to contend realistically, as the judge appeared to have held, that Scramble was a sign or indication which had become customary in the current language or in the bona fide and established practices of the trade.

Accordingly, the judge’s conclusion on invalidity of the Scramble mark under article 7(1) would be reversed. Further, in respect of article 51(1)(b) of the Regulation, it was not established that Scramble was a common name in the trade in the EU for a game (see [140], [141], [150] of the judgment).

Mattel’s appeal would be allowed in relation to the validity/liability to revocation of the Scramble CTM (see [186]-[188] of the judgment).

(3) Although the judge’s approach to the secondary material was not accepted, looking at it as a whole, it did not give sufficient support to Mattel’s case to justify allowing the appeal on infringement of the Scrabble mark. The extent of side by side use would be expected to have produced far more abundant evidence of confusion by the date of trial.

Therefore, the factors relied on by Zynga had to have been sufficient, in combination with the small difference between mark and sign, to eliminate the risk of real confusion occurring amongst a significant proportion of the public. The degree of similarity between Scrabble and Scramble or SWF was not sufficiently great to give rise to a likelihood of confusion. Further, Mattel’s case in passing off had not been made out (see [160], [181], [182], [185] of the judgment).

Mattel’s appeal would be dismissed in relation to infringement of the Scrabble CTMs and passing off (see [186]-[188] of the judgment).

(4) The question of whether there was infringement of the Scramble CTM was straightforward, whether the sign under consideration was Scramble or SWF. So far as Scramble was concerned the goods were identical for those for which the mark was registered and the mark and sign were identical. Confusion was not just likely but inevitable.

Further, the addition of ‘with Friends’ would not be adequate to avoid confusion. In relation to the stylised ‘M’, the judge had applied a ‘quick glance’ test, which was not, as the authorities showed, how the average consumer was to be assumed to approach his task. Further, if the average consumer was in fact reading the stylised ‘M’ as a ‘B’ that would be expected to be reflected in some way in the available evidence of confusion (see [152], [184] of the judgment).

Zynga’s appeal would be allowed in relation to infringement of the Scrabble CTMs by the stylised ‘M’. Its respondent’s notice on non-infringement of the Scramble CTM would be dismissed (see [186]-[188] of the judgment).

Decision of Peter Smith J [2013] All ER (D) 22( Nov) reversed in part.

Michael Silverleaf QC and Jeremy Heald (instructed by Bird & Bird LLP) for Mattel; James Mellor QC, Philip Roberts and Alaina Newnes (instructed by Olswang LLP) for Zynga.