Scramble and Scrabble: The Court of Appeal's Judgment

The value of the word 'Appeal' may not be worthy of boast in a game of Scrabble, however, the Court of Appeal recently played a game changing move in the judgment between JW Spear & Sons Limited & Others v Zynga Inc [2015] EWCA Civ 290.

Background

The claim stems from the launch by the Defendant, Zynga Inc, of an online game titled 'Scramble With Friends' for use on the Apple iPhone, iPad and Android devices and which was available to download to these platforms via iTunes and Google Play.

In introducing the game, the Defendant was accused of infringing the Claimant's Community Trade Marks ("CTM") for the word marks 'Scrabble' and Scramble' and figurative mark 'Scrabble', as well as the Claimant's United Kingdom mark for the 3-D Scrabble Tile.

In addition to the registered marks, the Claimant alleged the Defendant's use of the signs 'Scramble', 'Scramble With Friends' and 'the Scramble With Friends device' amounted to the tort of passing off with regard to the goodwill held by the Claimant in the game.

Peter Smith J, sitting in the first instance, did not agree with the Claimant and threw out all but one of their claims for trade mark infringement and passing off, except for the claim in relation to 'Scrabble' mark which was held to be infringed by the Defendant's 'Scramble with Friends' sign.

The Judge held that the Scramble signs used by the Defendant would have been held as an infringement, however, the registered marks held by the Claimant was an invalid registration liable for revocation on the grounds that the sign could, in the course of business, and had become synonymous with the product to which it was registered.

The Appeal

On appeal, Mattel succeeded in reinstating the validity of their 'Scramble' CTM word mark which in turn confirmed that the Defendant's use of the Word 'Scramble' and 'Scramble With Friends' was a bona fide infringement of the CTM's held by Mattel.  In addition, the Court of Appeal also held that the 'Scramble' and 'Scramble With Friends' sign used by the Defendant was an infringement of the Claimant's Scrabble mark based on the degree of visual, phonetic and conceptual similarity between the two marks, even though one of the judges, Floyd LJ, could not find a likelihood of confusion.

The Judgment considered various factors in overturning the decision of the lower court including the context in which the allegedly infringing sign was used.  Contrary to the reasoning of the judge at first instance, the Court of Appeal held that the contextual use by the Claimant of the sign was an important consideration in determining whether the Defendant had infringed the mark.

On the question as to the minimal level of similarity required before the Court may consider the question of a likelihood of confusion, Floyd LJ suggested that:

"the General Court has said that where there is (a) average visual and phonetic similarity, but no conceptual similarity (Wesergold), or (b) a number of visual and phonetic features which precluded the signs from being perceived as similar (Ferrero), or (c) no visual or phonetic similarity but a low degree of conceptual similarity (Lufthansa), or (d) a common suffix (Kaul), there may yet be no similarity overall between mark and sign. I have no difficulty with these conclusions: it is only overall similarity which counts."

With regard to the reinstatement of the Scramble CTM mark held by the Claimant, Floyd LJ considered the use of the everyday term in the United States (being the country of origin of both parties) and came to the conclusion that it was not a descriptive term in common use for such word games.  In his judgment, Floyd LJ said:

"Although there is quite a degree of descriptive allusion in the mark SCRAMBLE, I do not regard its impact as being so far towards the descriptive end of the spectrum that it was unregistrable"

Conclusion

The Court of Appeal decision appears to restore the natural order and the unusual rulings of the first instance judge set right.

It is arguable that the Court of Appeal did not go far enough in its decision regarding the Scrabble v Scramble issue and finding a likelihood of confusion.  Floyd LJ, commented that:

"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 far more abundant evidence of confusion by the date of trial."