Zynga scores partial victory over Mattel in Scrabble battle

04-11-2013

Zynga scores partial victory over Mattel in Scrabble battle

An imitation of popular word play game Scrabble did not infringe on trademarks belonging to the original game but will have to change part of its logo, a UK court has ruled.

The High Court ruled that the name ‘Scramble With Friends’ produced by online games company Zynga, was not too similar to Scrabble.

Mattel, the owner of Scrabble, had sought an injunction against Zynga from marketing the game on the grounds that its name would confuse customers into thinking they were purchasing a Scrabble game.

It asserted Community Trademarks numbers 401737 for the word Scrabble, 401489 (a figurative mark) for its logo and 6223077 for the word registered in respect of computer software and computer games.

However, in a ruling issued on November 1, High Court Judge Justice Peter Smith dismissed Mattel’s argument but accepted Zynga’s use of a curved letter ‘m’ in its logo could cause confusion because it could be interpreted to spell out Scrabble.

Judge Smith wrote he was “firmly of the view” that Zynga's present logo, which features a slanted ‘m’ “gives the impression that the word is Scrabble when one looks at it quickly.”

But Smith added: “Other than that I do not accept there is any actionable claim against the use of the word Scramble in respect of the Scrabble trademarks.

“Zynga is using a word which is descriptive of the game and is in the public domain as regards describing games of that nature and is commonly used in word games.”

Matthew Sammon, trademark attorney at Marks & Clerk LLP in Manchester, UK, said he was “surprised” so much emphasis had been placed on the shape of the letter ‘m’.

“Given how well Zynga faired in regards to the rest of the case it’s quite surprising that this part went against them,” Sammon said, adding that Mattel would have been expected to claim the ‘m’ was shaped differently on purpose.

“The fact it’s not an ordinary shaped ‘m’ does bring it slightly closer but its strong wording from Judge Smith who seems fairly adamant it looks like a ‘b’.  I’m not sure I would agree.

“I think it is likely Zynga will appeal against this part, although given the platform (mobile app) amending the logo should prove a fairly minor task.”

During the case, Mattel had permission to refer to two surveys when providing evidence of confusion, however, Judge Smith wrote that none of those involved in giving answers was called as a witness and, as a result, ruled that the surveys carried “no evidential weight whatsoever.”

“It’s interesting to note how difficult it is to get survey evidence accepted into a trial,” Sammon added.

“It’s pretty much the norm to reject survey-based evidence these days. If you use a survey as part of the evidence it is vital to call on the respondents as witnesses.

“Judge Smith was clear in his view that there is no substitute to hearing directly from witnesses or from those involved.”

The case centred on a total of three trademarks after one of Mattel’s claims over the appearance of the game’s playing tiles was dismissed earlier this month.  

Scrabble, Mattel, Zynga, trademark, CTM, High Court