J.W. Spear & Sons Ltd Mattel, Inc & Anor v Zynga Inc

Trade mark infringement and passing off require an assessment of the relevant consumer or public, viewed globally and in context. Judicial impression remains relevant, but must be tested against the evidence and its weight. Untested survey evidence may carry no weight where its methodology and recording process are materially defective. Long-standing inaction by a rights-holder may be powerful evidence that it did not perceive confusion, infringement or damage, although it is not itself waiver or estoppel. A descriptive or commonly used word for a type of game may lack trade mark protection. The use of an otherwise non-infringing word may nevertheless be actionable where an ambiguous logo creates the relevant likelihood of confusion.

Mattel alleged that Zynga’s online game Scramble With Friends infringed its SCRABBLE and SCRAMBLE trade marks and amounted to passing off. Zynga counterclaimed that the SCRAMBLE Community trade mark was invalid for lack of distinctive character and descriptiveness, common usage, and genericism. The court also considered evidence concerning Zynga’s earlier games, Mattel’s prolonged inaction, consumer surveys and the design of Zynga’s logo.

The central issues were whether use of the word “Scramble”, alone or with “With Friends”, created a likelihood of confusion or deception, whether the SCRAMBLE mark was valid, and whether the particular logo was independently actionable.

1. Trade mark infringement and passing off. The court applied the global assessment required for likelihood of confusion, considering the average consumer, the overall impression of the signs, their visual, aural and conceptual similarity, the goods and services, and all relevant circumstances. Passing off required goodwill or reputation, a misrepresentation likely to deceive, and damage.
2. Evidence. The surveys had no evidential weight. The methodology was materially flawed, the screening criteria were defective, the interviewers’ records were untested, and the expert had not conducted the interviews. Unidentified internet statements and customer material were likewise given no weight. The judge’s own impression remained relevant, but could not be treated as a substitute for a proper assessment of the evidence and the applicable consumer or public.
3. Inactivity. Mattel had known of Zynga’s earlier use of “Scramble” and had taken no action. Its negotiations for a licence to make board-game versions of Zynga’s products were inconsistent with its litigation position. That conduct strongly supported the conclusion that Mattel had not genuinely perceived the word as infringing or causing confusion or damage.
4. Word marks. “Scramble”, whether used alone or with “With Friends”, was not sufficiently similar to SCRABBLE and was not likely to confuse the relevant public. The word was descriptive of the game, commonly used in word games, and had become a common name for such games. The SCRAMBLE mark was therefore invalid under Article 7(1)(c) and (d) of the Community trade mark Regulation.
5. Logo. The word itself was not actionable, but the particular logo, in which the letter “m” was placed on its side, could appear to read “Scrabble” at a quick glance. That ambiguity had the propensity to confuse the relevant categories of consumer or public.
6. Mattel’s claims therefore failed save in respect of the ambiguous logo, and Zynga succeeded on its counterclaim concerning the SCRAMBLE mark. The form of order was left for further submissions.

First-instance judgment. The judgment records that an earlier decision concerning the tile trade mark had been affirmed by the Court of Appeal in [2013] EWCA Civ 1175, but states that decision was irrelevant to the issues determined here.