IP & IT Bytes: Validity and infringement: online games

08 May 2015

Audrey Horton

The Court of Appeal has partially upheld an appeal in relation to infringement of SCRABBLE and SCRAMBLE Community trade marks (CTMs) and passing off, and has reversed a finding of invalidity in relation to the SCRAMBLE mark.

Background

The CTM Regulation (207/2009/EC) provides that a CTM owner has the right to prevent unauthorised third parties from using, in the course of trade, any sign:

  • Where, because of its similarity to the CTM, and the identity or similarity of the goods or services covered by the CTM and the sign, there exists a likelihood of confusion or association on the part of the public (Article 9(1)(b)).
  • Which is identical with, or similar to, the CTM, which has a reputation in the EU, and where the use of the sign is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the CTM (Article 9(1)(c)).

The European Court of Justice has ruled that a trade mark owner’s use in a particular colour of a trade mark registered in black and white can be taken into account in the global assessment of likelihood of confusion where the sign complained of is used by the alleged infringer in that particular colour (Specsavers International Healthcare Ltd and others v Asda Stores Ltd).

The CTM Regulation prohibits the registration of trade marks which, among other things, consist exclusively of signs or indications that:

  • May serve, in trade, to designate the kind, quality, quantity, intended purpose, or geographical origin of the goods or services covered by the trade mark application or registration (Article 7(1)(c)).
  • Have become customary in the current language or in the bona fide and established practices of the trade (Article 7(1)(d)).

The Court of Appeal has held that where no reliance was to be placed on a survey, evidence obtained from witnesses who were survey respondents was not admissible, and has laid down new guidelines on the admissibility of survey evidence (Marks & Spencer Plc v Interflora Inc and another).

Facts

M owned CTMs for the words SCRABBLE and SCRAMBLE, a figurative CTM containing the word "scrabble", and a UK trade mark consisting of the shape of a SCRABBLE playing tile. These marks covered electronic games. M sued Z for trade mark infringement and passing off in respect of Z’s online games called "Scramble" or "Scramble with friends".

The High Court, upheld by the Court of Appeal, declared that the UK tile trade mark was invalid. The High Court also found infringement and passing off in respect of the CTM for the word mark SCRAMBLE, but held that the CTM was invalid as either descriptive or generic in relation to games similar to "Scramble with friends". Both parties appealed.

Decision

The court found that M’s SCRAMBLE mark was valid and infringed under Article 9(1)(b). It also held that M’s SCRABBLE marks were not infringed under Article 9(1)(b) or Article 9(1)(c) because the secondary evidence adduced was not sufficient to justify allowing the appeal. For the same reason there was no passing off.

In relation to the validity of the SCRAMBLE CTM, not every word that alludes to or is suggestive of some aspect of the relevant goods or services will necessarily be unregistrable. Three considerations may determine whether the word falls too far on the side of allusion and descriptiveness to be registrable:

  • How factual and objective is the relationship between an indication and the product or one of its characteristics?
  • How readily is the message of the indication conveyed?
  • How significant or central to the product is the characteristic?

Although there was a degree of descriptive allusion in the mark SCRAMBLE, applying the criteria above, it was not so far toward the descriptive end of the spectrum as to render it unregistrable.

While M’s use of the mark in a particular colour could be taken into account because it affected how the average consumer perceived the trade mark itself, Specsavers did not go so far as to allow a trade mark owner to rely on matter extraneous to the registered mark itself but routinely used merely in association with the mark.

There is no minimum threshold of similarity under Article 9(1)(b). Where there is at least some overall similarity between mark and sign then it will be necessary to carry out a global assessment taking account of all relevant circumstances, including any enhanced distinctive character of the mark. As there was a moderate degree of similarity between SCRABBLE and Scramble, a global assessment of likelihood of confusion should have been carried out.

While the average consumer would not immediately understand Scramble as having a clear descriptive connotation, some loose descriptive allusion may still come across, which reduced to some extent the risk of confusion.

The iTunes reviews and tweets, adduced by M as evidence of actual confusion, had some value as they were unsolicited. Although the full context in which the remarks were made, and their statistical significance, was not known, it was wrong to reject them outright as they did show that the process of downloading an app does not necessarily prevent some form of confusion occurring. Still, they were not sufficient to allow M’s appeal on the finding of non-infringement of its SCRABBLE marks.

Comment

This decision provides useful and timely guidance on several points of trade mark law. In particular, it sets out a framework for assessing descriptiveness in relation to validity, and clarifies the extent to which a trade mark owner’s use of its mark can be relied on as relevant context when assessing infringement.

The decision also considers the extent to which social media can be relied on as secondary evidence of confusion. This raises interesting issues post-Interflora where permission to use surveys to establish likelihood of confusion in trade mark infringement claims is likely to be refused in all but exceptional cases.

In proceedings concerning relatively inexpensive or even free products, such as apps, customers are today unlikely to provide feedback through more traditional customer service channels where actual confusion might once have manifested itself, instead choosing to take to social media. Evidence of actual confusion will become increasingly difficult to find if the courts regularly find that social media material falls short in a similar way to surveys.

Case: W. Spear & Sons Ltd and others v Zynga Inc [2015] EWCA Civ 290.

First published in the April 2015 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

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