The makers of the game “Scrabble” recently commenced an action in the UK against Zynga; the makers of an online word game called “Scramble”. Mattel claimed Zynga, by using the name “Scramble”, were passing off and infringing two trademarks that were registered by Mattel in the United Kingdom.
In 2007, Zynga developed a game called “Scramble” that required the user to make words from randomly allocated letters on a white background, with each letter having an ascribed point value. Scramble used a logo which was a letter with the point value on a white background.
In 2012, Zynga made the game available via a mobile phone app, using the same logo.
The court held that Zynga’s logo could not be registered as a colour trade mark as it was invalid for descriptiveness.
In their clam, Mattel relied upon market research and surveys in an attempt to show that consumers would be confused between the two products.
The court dismissed Mattel’s claim on the basis that the evidence has no “weight whatsoever”. The research and surveys were dismissed on the basis that:
- No people who completed the surveys were called as witnesses;
- No expert witness was involved in conducting or assisting with the surveys; and
- The recipients of the market research interviews were not screened appropriately.
On the basis that the evidence was not significant, the Court considered Mattel’s actions prior to issuing proceedings. The court discovered that Mattel has been aware of the game “Scramble”, but that no action had been taken.
Finally, the court considered that Mattel’s approaches to Zynga to licence the “Scramble” game for Mattel’s benefit was testament to the awareness of Scramble. As such, the court inferred that the action commenced by Mattel was potentially anti-competitive, since had the licence been successfully granted, the action would never have arisen.
The outcome of this dispute is that trade mark owners must monitor similar trademarks, and take swift action to ensure that any infringement of those trademarks is enforced.
Trademarks give you powerful protection over your brand. Owning your trademark grants you exclusive use in association with your brand, good or service. Trademarks protect your business from your competition being able to use a similar logo or mark. By registering a trademark, you are creating a business asset that has value and can be licensed and sold.
Our team can help you with all aspects of Intellectual Property and Trademark Law including advise on selecting and registering your brand, conducting trademark searches, preparing and filing trademark applications to assignments and licensing, searching and watching, infringements, renewals, due diligence, oppositions, litigation support, litigation and dispute resolution and commercialisation advice and assistance.