Zynga’s “Scramble with friends” game does not infringe Mattel’s SCRABBLE marks. The High Court has rejected Mattel’s claim for trade mark infringement and passing off of its SCRABBLE and SCRAMBLE Community trade marks (CTMs) in respect of Zynga’s online “Scramble with friends” game. A significant part of the judgment is concerned with the judge’s determination of the facts, particularly with regard to the extent of Mattel’s knowledge of Zynga’s three earlier versions of its game. However, ultimately, Peter Smith J decided the case on infringement and passing off according to his own judicial instinct. He concluded that the word “Scramble” whether on its own or with “with friends” did not infringe the SCRABBLE trade marks; it was not similar and was not likely to cause confusion for the relevant persons for trade mark infringement or passing off. The judge also found that the SCRAMBLE CTM was invalid; it was either descriptive or had become a common name for such games, under Article 7(1)(c) and (d), respectively, of the CTM Regulation (207/2009/EC). This decision is a further blow to Mattel, following closely behind the Court of Appeal’s decision in relation to the validity of its three-dimensional tile mark, although it will find some comfort in the judge’s remarks in relation to the letter “m” on its side in Zynga’s logo and its propensity to confuse: see J W Spear and Sons Ltd and others v Zynga Inc [2013] EWHC Civ 3348, 1 November 2013.

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