J W Spear & Sons Ltd & Ors v Zynga Inc

An application to expedite a trial requires real, objectively viewed urgency. The court must first decide whether that threshold is met. Only then should it determine the appropriate degree of expedition.

The discretion must be exercised judicially, having regard not only to the parties but also to other litigants, court resources and the ordinary listing queue. Trade mark proceedings enjoy no special presumption in favour of expedition. Difficulties in quantifying damages, without more, will not ordinarily justify expedition where damages remain an adequate remedy.

The claimants, members of the Mattel group, sought an expedited trial of trade mark infringement proceedings against Zynga Inc concerning its game Scramble With Friends. The claim alleged infringement of registered Community and United Kingdom marks, including SCRAMBLE and SCRABBLE marks, through the game’s name and get-up.

The claimants relied principally on the proposed launch of a new digital game under the SCRAMBLE mark and alleged continuing damage to the existing Scrabble digital brand. No interim injunction had been sought. The central issue was whether those matters established sufficient urgency to justify giving the claim priority over other cases.

The application for expedition was refused.

1. Threshold issue. The court adopted the principles identified in Daltel Europe Ltd (in Liquidation) & Ors v Hassan Ali Makki [2004] EWHC 1631 Ch and the later review in CPC Group Ltd v Qatari Diar Real Estate Investment Co [2009] EWHC 3202 (Ch). Expedition is a matter of judicial discretion. It requires real, objectively viewed urgency, because expedition gives one case preference over other litigants and imposes demands on legal and judicial resources.
2. The court must consider its wider responsibilities to other court users. Delay may count against an applicant, although it is not necessarily decisive. The respondent’s attitude is comparatively unimportant unless it can establish real prejudice. The first question is always whether urgency is justified; only if it is should the court consider the appropriate timetable.
3. The four factors identified in W L Gore & Associates GmbH v Geox SPA [2008] EWCA Civ 622—good reason for expedition, interference with the administration of justice, prejudice to the other party and other special factors—did not establish a narrower test confined to the loss of an existing hearing slot. Wider effects on court resources and the queue remain relevant.
4. The proposed product launch and alleged continuing brand damage did not meet the threshold. The evidence concerning the new product was thin, the launch would occur in any event, and the claimants had not sought interim injunctive relief. Difficulties in quantifying trade mark damages were familiar and could be addressed by the court if infringement were proved.
5. Although the dispute was substantial and potentially complex, the parties’ resources meant that an October trial could have been prepared fairly if expedition had otherwise been justified. That consideration did not overcome the failure to establish sufficient urgency. Trade mark cases have no special priority or presumption in favour of expedition.