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England and Wales High Court (Chancery Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> J.W. Spear & Sons Ltd Mattel, Inc & Anor v Zynga Inc [2013] EWHC 3348 (Ch) (01 November 2013) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2013/3348.html Cite as: [2013] EWHC 3348 (Ch) |
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CHANCERY DIVISION
Strand, London, WC2A 2LL |
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B e f o r e :
____________________
| J.W. Spear & Sons Ltd Mattel, Inc (a corporation incorporated under the law of the State of Delaware in the United States of America) Mattel UK Ltd |
Claimants |
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| - and - |
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| Zynga Inc (a corporation incorporated under the law of the State of Delaware in the United States of America) |
Defendant |
____________________
Mr James Mellor QC & Philip Roberts (instructed by Olswang LLP) for the Defendant
Hearing dates: 15, 16, 17, 20, 21, 22, 23, 24 May, 6, 7, 13 June, 8, 11, and 12 July 2013
____________________
Crown Copyright ©
Peter Smith J:
INTRODUCTION
i) Community Trade Mark no. 401737 for the word mark SCRABBLE registered in respect of inter alia "computer programs" in class 9 "toys, games and play things" in class 28 and "education", "entertainment" and "organisation of competitions" in class 41 with effect from 2nd October 2001.ii) Community Trade Mark no. 401489 for the figurative mark depicted below registered in respect of inter alia "computer programs" in class 9 "toys, games and play things" in class 28 and "education", "entertainment" and "organisation of competitions" in class 41 with effect from 25th October 1996.
iii) United Kingdom registered trade mark no. 2154349 for the 3 dimensional mark depicted below in respect of computer game adaptions of board games in class 9, "board games" in class 28 and "organisation of competitions and exhibitions, all relating to board games" in class 41 with effect from 23rd December 1997.
iv) There is a separate registration in respect of the word "SCRAMBLE" being Community Trade Mark no. 6223077 for that word registered in respect of inter alia "computer software" and "computer games programs [software]" in class 9, "Games and playthings" in class 28 and "Education" and "entertainment" in class 41 with effect from 23rd August 2007.
MATTEL
ZYNGA'S SCRAMBLE APP
ZYNGA'S 5TH VERSION
.png)
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DESCRIPTION |
SCREENSHOT |
iPad Scramble With Friends icon: Paid version (Figure 1) and Free version (Figure 2). |
Figure 1: .png) Figure 2: .png) |
iPhone Scramble With Friends icon taken from the search results page (including short cut to POS page). Paid version: Figure 3. Free version: Figure 4. |
Figure 3: .png) Figure 4: .png) |
iTunes (Desktop version) Scramble With Friends icon taken from the search results page. Free version: Figure 5. Paid version: Figure 6. |
Figure 5: .png) Figure 6: .png) |
a. Use in the course of trade of a sign which is identical to the SCRAMBLE trade mark in relation to goods for which the Scramble trade mark is registered contrary to Article 9 (1) (a) of the Community Trade Mark Regulation (EC) no. 207/2009; and/or
b. Use in the course of trade of a sign where because of its identity with, or similarity to, the SCRAMBLE trade mark and the identity or similarity to goods or services covered by the SCRAMBLE trade mark there exists a likelihood of confusion (including a likelihood of association between the sign and the trade mark) on the part of the public contrary to Article 9 (1) (b) of the CTMR.
"A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are [identical, similar or][1] not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark."
ZYNGA'S DEFENCE AND COUNTERCLAIM
COUNTERCLAIM
AMENDMENTS TO DEFENCE AND COUNTERCLAIM
"I should mention that I have been informed [interpellation source not identified] that at some point in around 2008 prior to my becoming involved with the Scrabble brand some people at Mattel became aware that Zynga had created a new word game to the iphone called Scramble Live. It seems to me that subsequent versions of the game were later released called Scramble 2 and Scramble Challenge. At SC4 I enclose a screen shot of Scramble Live from a Zynga promotional video. My understanding [interpellation source not identified again] is that the game did not achieve sufficient popularity for it to register with management at Mattel as a risk and therefore it was not necessary to take the legal action in respect of it. I believe that Zynga later withdrew the game at some point in 2011."
"At the time of issuing these proceedings, Mattel was extremely concerned that if Zynga's Scramble App remained on the market, Mattel would have to launch its Scramble App in a hostile market. That has now proven to be true. We attempted to launch this game in January 2013 on the UK Apple App Store, but we were prevented from doing so by Apple because of the existence of Zynga's Scramble App. As a result, we are having to launch the game as "Scramble by Mattel". Therefore, despite owning a registered trade mark for "Scramble", we have been prevented from launching an App called "Scramble", and we must now attempt to build a reputation in our App in the same market as Zynga's Scramble App.
Why Mattel is taking action now
As the above chronology shows, Zynga says that it first launched a game called "Scramble" in late 2007 or early 2008. I do not know how successful the games described at points (i) to (iv) of paragraph 22 above were for Zynga. However, I do know that Zynga's Scramble App did not register with management at Mattel until it was released in its current form."
ALLEGED INFRINGEMENT
"The case law of the Court of Justice of the European Union establishes that the proprietor of a registered trade mark can only succeed in a claim under Article 5(1)(a) of the Directive if six conditions are satisfied: (i) there must be use of a sign by a third party; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is identical to the trade mark; (v) it must be in relation to goods or services which are identical to those for which the trade mark is registered; and (vi) it must affect or be liable to affect the functions of the trade mark: see in particular Case C-206/01 Arsenal Football plc v Reed [2002] ECR I-10273 at [51], Case C-245/02 Anheuser-Busch Inc v Budejovicky Budvar np [2004] I-10989 at [59], Case C-48/05 Adam Opel AG v Autec AG [2007] ECR I-1017 at [18]-[22] and Case C-17/06 Céline SARL v Céline SA [2007] ECR I-7041 at [16]".
a. the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
b. the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
c. the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
d. the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
e. nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
f. and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
g. a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
h. there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
i. mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
j. the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
k. if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.
"86 It is not entirely clear to me what Arnold J and the parties had in mind by the phrase "circumstances prior to, simultaneous with and subsequent to the use of the sign" but it must, I think, be seen in light of the particular and rather specific issue in that case, namely whether Article 9(1)(b) extended to confusion arising from use of the sign in advertising and promotional materials, so called 'initial interest confusion', whether or not any sale resulted and whether or not the consumer remained confused at the time of any such sale. The judge held that initial interest confusion was actionable. At least in the circumstances of that case, it mattered not that it was dispelled at a later time.
87 In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
PASSING OFF
"These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
"In the case of passing off Discovery contends that the description of the channel is merely descriptive of the services it is providing namely a channel which provides programmes on history and is similarly indicative of the kind and characteristic of the goods or services provided namely a channel which shows programmes devoted to history for the purposes of Section 11 of the Act and the Regulation.
At first blush it is difficult to see that the word "HISTORY" on its own is doing anything other than identify the nature of the operation that is to say delivery of history related programmes. The addition of the word DISCOVERY distances Discovery's channel from AETN's because Discovery identifies the channel with a group of channels from Discovery of which Discovery History is one. I have struggled to find any more appropriate word to describe the contents of a channel which is specifically created to show programmes of a historical nature.
As the above cases made clear this is essentially a question of fact. At the end of the evidence my provisional view at the start remained the same namely that I could not see any basis whether in relation to the trade marks or passing off that AETN could stop Discovery from using the word History on its own or in association with Discovery which in my view further distances Discovery's channel from AETN. I will set out the reasons for this further in this judgment."
MATTEL'S EVIDENCE
SURVEYS
ZYNGA'S FACT WITNESSES
FURTHER EVIDENCE
SURVEYS
"26 With the benefit of hindsight, perhaps I did not make my message clear enough in Interflora 1. Let me say it again, but more loudly. A judge should not let in evidence of this kind unless the party seeking to call that evidence satisfies him (a) that it is likely to be of REAL value; and (b) that the likely value of the evidence justifies the cost. "
27 Thus in my judgment the judge should have asked himself whether the evidence was likely to be of real value. The negative way of framing the test means that evidence which is not of real value will be admitted in a case which, after all, is about the provision of ordinary consumer services."
SEARCH FOR EVIDENCE
"The proper approach of the Court to the question was not in dispute. The Judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall "jury" assessment involving a combination of all these factors, see "GE" Trade Mark [1973] R.P.C. 297 at page 321. Ultimately the question is one for the court, not for the witnesses. It follows that if the judge's own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the Judge is supplemented by such evidence then it will succeed. And even if one's own opinion is that a deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case (Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341) is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more "it depends on the evidence."
"82 In the GE Trade Mark case Graham J at first instance ([1969] RPC 418) admitted survey evidence, but thought it of no weight. He did not criticise the way in which respondents to the survey had been selected; but he thought that the questions they had been asked were leading questions. It should be particularly noted that the evidence was adduced on the basis that it was (or at least purported to be) a statistically valid survey. In the Court of Appeal ([1970] RPC 339) the judges were more receptive. Salmon LJ began by looking at the question of confusion "from a broad common sense point of view", which included his own subjective impression. He went on to say:-
"Allowing for every criticism that was made of the survey evidence by the American company's statistical experts, the fact remained that at least 12% to 35% of the adult population would think that the GE mark on domestic electrical goods signified that the goods were manufactured by the English company."
83 He said that the judge had "wrongly … discounted the survey evidence" but he did not really explain why he took that view. Winn LJ also began by addressing the question as "a matter of first impression, on a common sense approach." He did not refer to or rely on the survey evidence. Cross LJ first formed a view without reference to the evidence, and then considered whether the evidence confirmed or displaced that view. He said that it was strikingly confirmed both by the survey and the trade evidence. The survey evidence showed "a very large number of people would think that an article such as an electric toaster bearing the GE mark was made by G.E.C." On further appeal to the House of Lords ([1973] RPC 297) the question arose whether the judges should have formed their own view at all, or whether they should have relied only on the evidence. Lord Diplock said:
"But where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a "jury question." By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused.
The question does not cease to be a "jury question" when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself."
84 On the particular facts he said:
"In the instant case all three members of the Court of Appeal were alert to the danger of relying upon their own idiosyncratic knowledge and temperaments. All gave due weight to the evidence adduced upon the issue at the hearing and to the criticisms of it by the trial judge. All were of opinion that they themselves would have been likely to be confused by the use of the rondel mark simpliciter upon electrical consumer goods if, as had been the fact before the hearing of the appeal, they had known of the English company but had not known of the American company.
My Lords, I myself, as a member of the public in the United Kingdom, am idiosyncratic in that I have for many years known of both companies. I should not have been likely to be confused by the use of the rondel mark simpliciter upon electrical consumer goods. Nevertheless, my common sense convinces me that there would be a likelihood of confusion among a substantial number of members of the public who did not share my idiosyncratic knowledge."
85 It is notable that in coming to his own conclusion Lord Diplock did not rely on the survey evidence.
"16 MR. JUSTICE PETER SMITH: Your case is that I started with my
17 instinct and then see whether my instinct is supported by the
18 secondary evidence, because I have no primary evidence in this
19 case.
20 MR. THORLEY: No, that is absolutely right. It is a matter of
21 judicial impression in the beginning and at the end. Your
22 Lordship cannot delegate that to any single witness and you
23 certainly cannot delegate it to a cohort of 10 or 20 people
24 who come along and say they were confused. Your Lordship is
25 then left in the position of saying, well, are they
[Page 25]
1 MR. SIMON THORLEY QC
2 representative of the average consumer.
3 MR. JUSTICE PETER SMITH: And that further puts down the line of
4 weight of your large extracts under your CEA notice, does it
5 not? That is even worse: I do not know whether they are
6 genuine, do I?
7 MR. THORLEY: No, you do not.
8 MR. JUSTICE PETER SMITH: Because I do not know who has made them.
9 They could have been assiduously made up by a team at the back
10 for all I know.
11 MR. THORLEY: Of course, and you then have to look through them
12 and have a judicial judgment as to the weight that you can
13 place on them.
14 MR. JUSTICE PETER SMITH: I am quite happy to decide the case on
15 my instinct, but I am not sure what my instinct is at the
16 moment. I think that is the right view to have at this stage.
17 MR. THORLEY: Absolutely. I think your Lordship has to let the
18 evidence wash over you.
19 MR. JUSTICE PETER SMITH: I agree.
20 MR. THORLEY: And at the end of the day you come together and say,
21 right, what would the average consumer think? One of course
22 has to avoid the trap of thinking that one is the average
23 consumer.
24 MR. JUSTICE PETER SMITH: I avoided that trap in the last case
25 I decided on this, because I decided I was an average consumer.
1 MR. SIMON THORLEY QC
2 I think, but in this that is why I told you what I did and did
3 not do. I am not an average consumer in this market.
4 MR. THORLEY: That probably places your Lordship in a better
5 position to come to the case with no preconceived views, but
6 to be able to allow, as I put it, the evidence to wash over
7 you and come to a conclusion at the end. I do not think
8 either side is suggesting that there is a decisive piece of
9 evidence here, a sort of road to Damascus moment when
10 everybody said it is quite plain this is the answer. This is
11 a question of evidence on one side, evidence on the other,
12 what is the likely reaction of the average consumer, that
13 notional beast.
14 MR. JUSTICE PETER SMITH: And a slightly different beast in
15 passing off.
16 MR. THORLEY: It is a slightly different beast for the purposes of
17 passing off, yes.
18 My learned friend's case is set out at 167 and
19 subsequent of his opening submissions. He says there are no
20 witnesses who experienced actual confusion, and I say the case
21 is sufficiently strong without. He says the survey is
22valueless. We will have a look and see on Monday afternoon
23 whether your Lordship is going to go along with that. He says
24 the evidence is perilously thin. That again is one of those
25 adjectives or adverbs which are scattered through his skeleton
[Page 27]
1 MR. SIMON THORLEY QC
2 to suggest that my case is not a very good one. Again, your
3 Lordship is not going to be moved by adjectives or adverbs at
4 this stage of the proceedings. He says they have a different
5 impression, although I am not quite sure what the different
6 impression is. He obviously relies on what he says is our
7 restricted reputation, i.e. we have a reputation in board
8 games and nobody would ever think that electronic downloaded
9 games have any connection with board games. It is a slightly
10 odd submission when he accepts that Words With Friends is the
11 electronic equivalent to Scrabble and he contends that
12 Scramble With Friends is the electronic equivalent of a board
13 game named Boggle. I do not know if your Lordship has ever
14 been involved with Boggle. Nor have I."
SOME CONCERNS
"KARAMANOS - MELLOR
2 Q. And did that take place after you first saw the Zynga Scrabble
3 Scramble App?
4 A. Yes.
5 Q. And did you raise that as a subject with them?
6 A. Not at the time, no.
7 Q. But if you are pitching to a company like Zynga, you and your
8 team would have wanted to show that they understood Zynga's
9 product range and could make a real success of marketing
10 physical versions of their games. Correct?
11 A. Correct.
12 Q. So people in your team would have looked pretty closely at all
13 of Zynga's games. Yes?
14 A. Yes.
15 Q. Who did that in your pitch team?
16 A. I think we certainly had a group of both marketing people and
17 design, who collaborated on concepts, presentation. One of
18 the things that we had understood as we first became aware of
19 it earlier, by a week or two, a couple of weeks perhaps before
20 the presentation, we were still processing it, we were still
21 understanding exactly what was the app, what did it do, how
22 did it look, how did it feel. We were still in that process.
23 MR. JUSTICE PETER SMITH: In January 2012 you are telling me that
24 you were part of the pitch?
1 KARAMANOS - MELLOR
2 Q. To Zynga to make board game versions of their apps. Is that
3 right?
4 A. Yes.
5 Q. And at that time were you aware of their Scramble App. Is
6 that right?
7 A. We had just become aware.
8 Q. Two things. Were you contemplating making a board game
9 version of that app when you made the application to them?
10 A. The pitch concepts that we showed them did not include
11 a Scramble concept, but the pitch itself would have been, in
12 theory, for the entire portfolio.
13 Q. So does that mean, then, that had you been successful you
14 would have pitched to make products which you now say
15 infringed your trade marks?
16 A. I think that is one of the things we would have had to look at
17 is, how do we, do we.
18 Q. I should not imagine it would have been a very friendly
19 relationship if the first thing that comes out of the
20 agreement is these proceedings.
21 A. Well, at the time we were also in the midst of negotiations
22 over Words With Friends.
23 Q. Words With Friends is a different business, is it not?
24 A. Yes, it is, it is a different app, yes. So this was a way to
25 try to resolve differences, you know, from a business
1 KARAMANOS - MELLOR
2 perspective.
3 Q. So you did not hold in your pocket the present claim in your
4 discussions with Zynga. Is that what you are telling me?
5 A. My Lord, we were still working through, what was that app, did
6 it play like what it looked like, so it came right before the
7 presentation.
8 Q. You know that Mr. Thorley has opened the case that it is in
9 effect blindingly obvious that Scramble is an infringement of
10 your trade marks, so you do not have to work very much on it,
11 do you? But I am just trying to understand what you are
12 doing. One inference might be that you have only brought this
13 litigation because you failed to get the successful bid.
14 Would that be an unfair inference to draw?
15 A. I believe so.
16 Q. So I am trying to understand how you are going to deal with
17 people who you are hoping to have a business relationship
18 with, involving products which you say were created infringing
19 your trade marks without actually meeting that head on.
20 Sooner or later you are going to have to say to them, "Just
21 a minute, this very successful product is ours in reality".
22 How would you do it?
23 A. Well, I think the intention at the time was after the
24 presentation to then ----
25 Q. "Here is the claim form".
[Page 145]
1 KARAMANOS - MELLOR
2 A. No ----
3 Q. Or, "Here is the draft claim form. Unless we get better
4 terms, this is what is going to happen". You never threatened
5 the litigation in discussions, I suspect, did you?
6 A. No, not on Scramble, no, but part of it was to understand
7 exactly where could the two companies meet.
8 MR. MELLOR: Let us be clear, Mr. Karamanos. If Zynga had awarded
9 you the business, you would never have sued them in this
10 action, would you?
11 A. The intention would have been to work through the differences
12 of the two companies.
13 MR. JUSTICE PETER SMITH: I am sorry, the differences are a bit
14 stark, "That is our product, you cannot do it". That is what
15 you are trying to do by this action.
16 A. Right.
17 Q. So you must have had a game plan. What was the game plan?
18 A. The game plan was to meet, to see if there could be
19 negotiations and ultimately once it became clear it was not
20 us, then we utilised this other option that we had available
21 to us.
22 Q. So Mr. Mellor is absolutely right, is he not, in view of that
23 answer, that had you been successful you would not have sued.
24 You would have allowed them to carry on selling their apps
25 because all you are interested in were the board games. You
1 KARAMANOS - MELLOR
2 were not interested in the stuff on the iPhones/iPads. Is
3 that not the true answer to Mr. Mellor's question?
4 A. I am sorry, could you repeat that?
5 Q. I am sorry, it was a very badly phrased question. In effect,
6 you are pitching for the board games. You want to reproduce
7 their products as board games.
8 A. Correct.
9 Q. And I think the answer shows that you would not have sued them
10 had you been successful on that pitch.
11 A. Highly unlikely that we would have done.
12 Q. And the second thing that flows from that is that your
13 company's real interest is in making board games and not
14 products to go on the iPhones. You would let them keep that.
15 All you want are the board games.
16 A. Not exactly going forward, my Lord, I would dispute that. Our
17 intention and one of the strategies that I had laid out during
18 my time there was to start going with what I would call the
19 digital first strategy.
20 Q. If you sign up to manufacture their games as board games, and
21 they carry on making their Scramble With Friends, I would
22 suggest that it is extremely unlikely you would bring out your
23 own app to compete with the people in whom you were in
24 business. Is it not right? It is almost inevitable that
25 a contract that you entered into would prevent you competing
[Page 147]
1 KARAMANOS - MELLOR
2 with each other's products anyway, would it not? You would
3 want them barred out of the board games and they would want
4 you barred out of the apps. Is that not the reality?
5 A. Perhaps, indeed.
6 Q. Okay.
CONSEQUENCES
MR NELKON
MR MOORE
CONCLUSIONS ON MATTEL'S EVIDENCE
SOME CONCERNS ABOUT ZYNGA'S EVIDENCE
"Ok, just double checking that you mean Scramble and not Scrabble. Those to (sic) tend to get mixed up, hehe."
.png)
CONCLUSION ON THE EVIDENCE
"83. The case law makes clear that 'likelihood of confusion' is established by 'a risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings'. It is not necessary to show that the public would be confused: Thomson Holidays v Norwegian Cruise Lines [2003] RPC 32 at 56.
84. Nor is it necessary for Sky to show that all average consumers will be confused, or even that a majority of average consumers will be confused. Arnold J pointed out in the extract from his most recent Interflora judgment which I have quoted at some length, that the Court is not being asked to resolve a simple 'binary question' – is the average consumer confused or not? The question is whether confusion is sufficiently likely to warrant the court's intervention:
The fact that many consumers of whom the average consumer is representative would not be confused does not mean that the question is to be answered in the negative if a significant number would be confused."
MY VIEW
INFRINGEMENT OF THE SCRAMBLE TRADE MARK
1 "Scramble" is an ordinary English word
2 "Scramble" is commonly used in word games
3 On the basis that the mark was registered in bad faith
4 On the basis that "Scramble" has become a common name for such games
ZYNGA'S GOODWILL
Note 1 These words should be read into the CTMR in light of the CJEU’s decision in Case C-292/00 Davidoff v Gofkid [2003] ECR I-389; [2003] FSR 28. [Back]
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