Mattel's Lack Of Action Held To Be 'Destructive' Of Its Case Against Zynga

On 1 November 2013, the Honourable Mr Justice Peter Smith handed down his judgment in the case of J.W. Spear & Sons Ltd Mattel Inc v Zynga Inc [2013] EWHC 3348 (Ch), finding Zynga did not infringe Mattel's Scrabble trade marks.

Overview

J.W. Spear & Sons own the rights to produce and market the board game Scrabble outside North America and they are owned by American toy manufacturing company Mattel, Inc (together "Mattel"). Zynga is a developer of social games for mobile platforms including Farmville, Zynga Poker and Words With Friends.

This dispute related to Zynga's mobile app game Scramble With Friends, which is similar to Boggle and involves players finding as many words as possible in a jumbled 4x4 grid of letters by connecting adjacent letters within two minutes.

Mattel alleged that Scramble With Friends and the Scramble With Friends logo infringed the following trade marks:

CTM registration no. 401737 SCRABBLE in Classes 9, 28 and 41; CTM registration no. 401489 SCRABBLE Device in Classes 9, 28 and 41; UK trade mark registration no. 2154349 for a three dimensional tile mark in Classes 9, 28 and 41; and CTM registration no. 6223077 SCRAMBLE in Classes 9, 28 and 41. Mattel also alleged passing off, although there was no passing off allegation in relation to the "get up" of the game, only in relation to the words, the use of tiles and the Scramble icon. However, a summary judgment of 28 November 2012 found that the tile registration was invalid as it was not a "sign" in line with Article 2 of the Trade Mark Directive. An appeal by Mattel was dismissed by the Court of Appeal in October ([2013] EWCA Civ 1175).

Zynga counterclaimed for a declaration that the SCRAMBLE trade mark was invalid on the grounds of lack of distinctive character, descriptiveness, common usage, bad faith and revocation for genericism (they have also applied to the OHIM for an invalidity declaration). Proceedings are also ongoing between the parties in France and Germany.

Facts

Zynga has been producing electronic games since 2007 with its first version of the disputed game launched as Scramble around late 2007. Scramble With Friends is the fifth edition of the game and was launched in January 2012. The Scramble With Friends logo consists of rectangular tiles containing letters and numbers, similar to Scrabble tiles. Further, the "m" in Scramble is stylised and on a quick glance looks similar to a letter "B" on it's side. Mattel first produced an electronic version of...