Mattel, the owner of the SCRABBLE trade-mark, sued Zynga for trade-mark infringement in the UK, claiming that Zynga’s SCRAMBLE WITH FRIENDS game was confusingly similar to Mattel’s SCRABBLE registration.
The UK High Court dismissed Mattel’s request for an injunction against the SCRAMBLE word mark, ruling that SCRAMBLE was not confusing with SCRABBLE. In the court’s view, the word SCRAMBLE was an ordinary English word that was descriptive of the game.
Interestingly, the court relied on the fact that Mattel knew about Zynga’s use of the word SCRAMBLE for many years and did nothing about it. From this, the judge concluded that Mattel didn’t perceive the use of the word SCRAMBLE to be an infringement of Mattel’s rights.
However, the court granted an injunction in respect of Zynga’s SCRAMBLE logo, ruling that the twisty “M” in the logo “gives the impression that the word is SCRABBLE”.
The test for trade-mark confusion is different throughout the world. In Canada, the test for confusion requires the courts to look at all surrounding circumstances, including:
(a) the inherent distinctiveness of the trade-marks or trade-names and the extent to which they have become known;
(b) the length of time the trade-marks or trade-names have been in use;
(c) the nature of the wares, services or business;
(d) the nature of the trade; and
(e) the degree of resemblance between the trade-marks or trade-names in appearance or sound or in the ideas suggested by them.
The “descriptiveness” issue is covered in the first part of the test, regarding the inherent distinctiveness of the marks, although it would apply to both marks (e.g. SCRABBLE and SCRAMBLE).