App Developer Wins in SCRABBLE Battle

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01-players-required-for-scramble-with-friends-large.PNGZynga, the world’s largest app-developer has scored a win against the owner of the SCRABBLE brand. This case brings up several interesting points about international trade-mark protection in the era of apps.

The well known SCRABBLE® brand is a registered trade-mark owned by different owners in different parts of the world. Hasbro Inc. owns the intellectual property rights in the U.S.A and Canada. In the rest of the world, the brand is owned by J.W. Spear & Sons Limited, a subsidiary of Mattel Inc. Mattel is not affiliated with Hasbro - in fact, the two companies are long-time rivals.

In JW Spear v. Zynga, a UK court has decided that the use of the SCRAMBLE brand by Zynga for its word-based app game does not infringe the SCRABBLE trade-mark in the UK, nor does it constitute passing-off. However, the court did consider Zynga’s SCRAMBLE logo design (above left) to constitute an infringement, since the stylized M appears at first glance to resemble a letter B. A few interesting points on this long-running battle:

  • As we’ve seen in other IP disputes covered by ipblog, this litigation is part of a wider dispute in multiple jurisdictions, including France and Germany.
  • Mattel was chastised by the court for its delay in responding to Zynga’s earlier use of the SCRAMBLE mark, in late 2007. This delay influenced the court’s conclusion that Mattel did not truly perceive SCRAMBLE to be a threat to the SCRABBLE mark. This in turn influenced the court’s opinion that the public would not be confused by the use of the 2 marks.
  • Mattel’s delay was likely caused by the efforts of the parties to negotiate a license agreement to produce a physical board-game version of the SCRAMBLE app. The litigation followed a break-down in negotiations, when Zynga concluded a deal with Mattel’s rival Hasbro.