Popular online game developer Zynga was recently the subject of a trade-mark infringement claim over their game “Scramble With Friends.” In the England and Wales High Court case, J.W. Spear & Sons Ltd Mattel, Inc & Anor v Zynga, Mattel claimed that the Zynga game infringed their SCRABBLE and SCRAMBLE family of marks.
Claim for Infringement and Counterclaim
Mattel argued that Zynga’s use of the mark was contrary to article 9 of the Community Trademark Regulations. This provision allows exclusive rights to a community mark, and the right to prevent use of a sign that is either : 1) identical to the registered mark, 2) similar to the registered mark and likely to cause confusion in relation to identical and similar goods, or 3) where use of the mark takes unfair advantage of the distinct character and reputation of the community mark. Zynga counterclaimed that the SCRAMBLE mark was invalid as it lacked distinctive character, was descriptive and had common usage, and that their mark was therefore non-infringing.
Evidence provided to the court indicated that Mattel was aware of the game for a number of years before launching a claim. At the time of the decision, the game was in its fifth version, and not only was Mattel aware of the game in earlier incarnations, but employees played the game with each other. The court also found it troubling that the claim was launched soon after negotiations regarding a joint venture between Mattel and Zynga broke down. The court concluded that such a delay indicated at worst that the negotiations were not carried out in good faith, and at best, that Mattel did not consider the game worthy of an infringement claim. In comparison, the court found that an email detailing Zynga’s concern over the potential confusion between Scrabble and Scramble to be insignificant.
The Court held that the word “scramble” was the common name for this type of game. As a result, the court agreed that Zynga merely used a wording in the public domain that is descriptive of the game and therefore did not infringe the mark. The Court concluded that neither “Scramble” nor “Scramble With Friends” infringed the SCRABBLE trade-mark. The Court deemed that mark was not similar and not likely to cause confusion for infringement or passing off. Yet, the Court did qualify this decision on a modification of the logo. The Scramble logo at the time contained an “m” on its side. The Court found that this gave “the impression that the word is scrabble when one looks at it quickly and has the propensity to confuse.” Although Zynga was largely successful they will have to alter their logo to avoid this potential confusion.
In North America, Hasbro holds the SCRABBLE trade-mark, and Electronic Arts holds the rights to digital versions of the game. In addition, Hasbro entered into an agreement with Zynga to create physical versions of games in the Zynga family, similar to the failed agreement in the Mattel claim. These games include a “Cityville” version of Monopoly and a “Draw Something” version of Pictionary that have tie-ins to the online versions of Zynga games.
In a similar case in Canada, Horn Abbot v Thurston Hayes Development Ltd, the Canadian Federal Court examined the similarity between Trivial Pursuit and a parodic adult version. In a comparison of the script and packaging, the court found that the defendant’s script was reminiscent of, but not identical to, the plaintiff’s script. The court went on to hold that the design and appearance of the game intended to raise an association with Trivial Pursuit. The court in that case rejected an argument that Trivial Pursuit was descriptive of the type of game, as it did more than merely describe the game. In that case, the court turned its mind to the use of a trade-mark and made it clear that the focus of the action is “use”, not the similarities between the games. In that case, the court did find that the parody infringed the Trivial Pursuit trade-mark.
Due to the agreement between Hasbro and Zynga and the fact that the game is unavailable to Canadian consumers, a similar claim is unlikely to be made in Canada. If a claim was brought in Canada, the claimant would have to show infringement of the SCRABBLE mark itself, rather than rely on the Zynga game’s similarity to Scrabble, or infringement of SCRAMBLE, since that mark is owned by Konami. Even absent this web of ownership, I believe that based on Horn Abbot, a Canadian court would be unlikely to find infringement in this case. To determine whether trade-marks or trade-names are confusing, the court must have regard for the surrounding circumstances including the degree of resemblance between the marks in appearance or sound or the ideas suggested according to section 6(5)(e) of the Trade-marks Act. Unlike in Horn Abbot, the marks are not similar in appearance. The UK court noted the use of different words, script and packaging. Furthermore, I think that the addition of “With Friends” to the Zynga game’s name identifies Scramble as a member of the Zynga “With Friends” family of marks rather than an attempt to confuse consumers by passing off.
In this case, Scrabble appears to be scrambling for a better result. A Mattel spokesperson has told news outlets that Mattel was “disappointed that the court did not rule that Zynga should cease using the Scramble name, which Mattel intends to appeal.”
Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.