A recent judgment of the Court of Appeal for England and Wales has settled an interesting case about trademarks. Mattel, an American toy marketing company, held the following trademarks: community trademarks for the words “SCRABBLE” and “SCRAMBLE”, community trademark for the scrabble brand logo, a UK domestic trademark for the shape of the game’s tile. Zynga, an American social games company, developed on-line games “Scramble” and “Scramble with Friends”. Mattel’s trademarks covered electronic games as well.

In 2012 Mattel sued Zynga alleging trademark infringement and passing off in Zynga’s on-line games. The High Court (court of first instance) invalidated Mattel’s trademark for the game’s tile. It also dismissed almost all of Mattel’s claims, finding only that the Scramble with Friends’ logo – especially the twisted “m”, which looked more like “b” – can be confused with the word “scrabble”. The Court also found that Zynga infringed Mattel’s word community trademark “SCRAMBLE”, however the trademark itself was invalid as it was a descriptive or generic name for word games.

Both Mattel and Zynga have appealed from the High Court’s judgment. The scrabble tile trademark was invalidated by the Court of Appeal in separate proceedings.

While Zynga generally won the case in first instance, Mattel won on appeal. The Court of Appeal reversed the High Court’s decision to invalidate Mattel’s community trademark “SCRAMBLE”, as there was no decisive evidence that the name is descriptive or generic for word games. As Mattel’s community trademark “SCRAMBLE” was found to be valid, the Court of Appeal declared that confusion between Mattel’s trademark “SCRAMBLE” and Zynga’s on-line games “Scramble” and “Scramble with Friends” is inevitable. What is more interesting, the Court of Appeal, contrary to the High Court’s reasoning, found that the twisted “m” in Scramble with Friend’s logo does not bear a risk of confusion with “SCRABBLE”.

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