Trade Mark Lawyer Update – Scramble!

Back in the heady days of 2012, Zynga launched its addictive word play game “Scramble with Friends”. Any visit to Facebook would find that another of your friends had fallen prey to its charms and invited you to join them.

However, success and popularity like that could not go unnoticed. Especially by the traditional board games companies who were struggling to update their games to meet modern technology. The progress of this case offers a cautionary tale to any start-up looking to create a new version of an existing product, and particularly, in the extent of protection given to trade marks in trade mark litigation in the UK.
SCRAMBLE v SCRAMBLE WITH FRIENDS, ROUND ONE

Sure enough, Zynga’s success was noticed by Mattel UK (“Mattel”) who thought that the name “Scramble with Friends” was a little too close to their long standing word game “SCRABBLE”. You might remember that back in 2013, the High Court in London dismissed a claim by Mattel against Zynga. Mattel had claimed that Zygna had infringed its Community trade marks (“CTM”) for “SCRABBLE” and “SCRAMBLE” and passing off in respect of Zynga’s game named “SCRAMBLE WITH FRIENDS”.

A key point in the case, which allowed Zynga to successfully defend proceedings, was that the Judge held Mattel’s CTM for SCRAMBLE was “invalid”. The Judge decided that the SCRAMBLE mark was descriptive and/or generic in relation to similar games because that word was in common use for word games at the date of Mattel’s registration and that the average consumer would draw conclusions as to the nature of a game from the inclusion of “Scramble” in its title. The High Court judge, Peter Smith J, found that, were the “SCRAMBLE” trade mark valid Zynga’s use of the sign SCRAMBLE WITH FRIENDS would have infringed. (You can find a full judgment here.

RESULT: ZYNGA – 1, MATTEL – 0
SCRAMBLE v  SCRAMBLE WITH FRIENDS, ROUND TWO

Mattel were not happy about losing the trade mark litigation and their trade mark for SCRAMBLE. So, they appealed the decision and, on 27 March 2015, the Court of Appeal handed down its judgment in the case (see the full judgment here).

The Court of Appeal agreed with Mattel and reversed the High Court’s finding of invalidity of Mattel’s trade mark for SCRAMBLE. It did not agree that the trade mark was either descriptive of a characteristic of the goods, or was generic.

So, a win for Mattel? Zynga forced to re-brand? Not so fast…

The Court of Appeal sided with Zynga on two important points:

• Mattel’s SCRABBLE trade marks were not infringed by Zynga’s “Scramble with friends” game. (This was the same conclusion that the trial judge had come too as well)..
• The High Court had found that Zynga had infringed a logo trade mark for SCRABBLE. However, the Court of Appeal disagreed and decided that Zynga’s logo did not infringe the SCRABBLE logo trade marks.

Mattel are left with only one possible route to successfully forcing Zynga to re-brand. This is because with its “SCRAMBLE” trade mark now determined to be valid. It can again re-visit the issue of whether Zynga’s SCRAMBLE WITH FRIENDS has infringed the mark, and whether Zynga will be able to continue to sell their “Scramble with friends” game under that title.

At the end of Round Two, the scores are, ZYNGA – 2, Mattel – 1.

The final deciding round is still to be determined. We’ll let you know when we know.

What lessons?

If you are developing new Apps and/or gaming software, which riffs on existing off-line games, it may well be worth investing in some trade mark and/or brand clearance advice before you launch. Having a clear idea of the risk, if any, that your name will infringe an existing trade mark at the outset will help you to design your brand and to plan your financing so that if you find yourself on the wrong end of a trade mark infringement claim you already have the resources in place to get the best result for your business.

If you have any questions relating to trade marks or any other intellectual property matter, please contact our trade mark specialists at Waterfront on 0207 234 0200 or contact@waterfront.law.