J.W. Spear & Sons Ltd Mattel, Inc & Anor v Zynga Inc

This is a dispute between 2 large US companies over the launch by the Defendant of an online game on 5^th January 2012. The game is called “Scramble With Friends” and/or “Scramble”. The game is for use on an Apple iPhone and iPad, as well as Android devices, and it is available for download from Apple iTunes and the Google Play Store where it is listed under the name “Scramble With Friends”. The game can be located by users of the iTunes and Google Play Store by performing a search for the word “Scramble”.

Whilst the game is available as a free advertising supported version there is also a paid- for advertisement-free version which costs £0.69 to users.

The Claimants (called together “Mattel”) contend that the Defendant (“Zynga”) in producing the game infringes the following:-

Mattel claim that Zynga’s game infringes those trade marks.

In addition Mattel claims that in view of its goodwill the Defendant’s use of the signs “Scramble”, “Scramble With Friends” and/or “the Scramble With Friends device” in relation to the game constitutes passing off of the game as being that of Mattel. Mattel contends that the misrepresentation is calculated to lead to the deception of a substantial number of members of the public to that effect. The particular features relied upon relate to games featuring the use of square tiles bearing a single upper case letter and a number between 1 and 10 or electronic representations thereof, the use of the Scramble icon and the fact that the game uses such tiles.

It will be realised that the passing off claim is somewhat limited as to its extent. In particular there is no allegation of “get up” of the form of the game so as to give rise to a claim for passing off vis-à-vis Mattel’s game. The sole claim is in relation to the use of the words above, the use of tiles and the Scramble icon.

The question of the tile registration was the subject matter of a decision by Mr Justice Arnold on 28^th November 2012 when he acceded to Zynga’s application for summary judgment on its counterclaim that the tile trade mark did not comply with article 2 of the Trade Mark Directive. Mattel appealed that decision. It was heard this term and the Court of Appeal has dismissed Mattel’s appeal ([2013] EWCA Civ 1175). Nothing in that judgment the parties agree has any relevance to the issues before me.

Zynga counterclaims for a declaration against the Scramble trade mark that it is invalid on the grounds of (1) lack of distinctive character (2) descriptiveness (3) common usage, bad faith and revocation for genericism. The allegation of bad faith was not proceeded with and the IP Translator counterclaim was not proceeded with ultimately during the course of the trial.

There are also apparently proceedings between the parties in both France and Germany.

On 2^nd April 2012 Zynga applied to the OHIM for a declaration that the Scramble trade mark is invalid. That application has been stayed by consent of the parties pending the outcome of this action.

Mattel is said to be one of the most successful toy and game manufacturers in the world. One of its most successful and well known games is said to be Scrabble. At some stage it was described as being “the jewel in the crown” but as the trial proceeded that position was retreated from as it represented 0.5% of its business. Barbie turned out to be more important (with or without Ken). Mattel owns the rights in Scrabble worldwide save for the USA and Canada where Hasbro own the rights. Scrabble has been sold in the EU since about 1954. It has been sold in over 100 countries and in more than 50 languages. It was reported in 2010 that 53% of all households in Great Britain owned a Scrabble game.

It is fair to say that Mattel produces Scrabble mostly in the form of a hard board game. The sales are significant. Confidential details were given to me at trial. They were not disputed by Zynga.

Mr Nelkon gave evidence about the creation of Scrabble which apparently started with a game in 1931 under the name “Criss Cross Words”, which changed to “Scrabble” and then began to be sold extensively from around 1955. These were all physical versions of Scrabble. Mr Nelkon set out the large number of different kinds of physical versions of the Scrabble game.

Mattel moved into the electronic version somewhat late around 2009 with an iPhone Scrabble app. As Mr Karamanos said in his confidential witness statement significant downloads of that app from its introduction in 2009 occurred.

Zynga only does electronic games. It does not market physical board games itself. Scramble With Friends (the one under challenge) was launched on 5^th January 2012.

There is an oddity in this case. Although Mattel was quick off the mark when this version of Scramble With Friends was launched that contrasts to the molasses like speed (or in fact non existent speed) with which it reacted to other launches by Zynga. This was not Zynga’s first use of the word Scramble. It first launched “SCRAMBLE” in late 2007 or early 2008. It was apparently a Facebook game in that it could only be played on Facebook.

Its second launch was “SCRAMBLE LIVE” which was launched in March 2009. It was a mobile app version of the Facebook game which meant that it could be downloaded on to users’ phones and played independently of Facebook. A Google Images search for Scramble Live shows a version with a turquoise background with the name Scramble Live on it with rounded touch pads.

The third called “SCRAMBLE 2” and “WORD SCRAMBLE 2 BY ZYNGA” was launched in September 2009. It was apparently an updated version of “Scramble Live”. A Google Image search provided by Mr Karamanos shows a radical change. Instead of the turquoise background the background is a blend of red and orange.

The fourth called “SCRAMBLE CHALLENGE EDITION” and “WORD SCRAMBLE CHALLENGE EDITION” was launched sometime in 2010. A Google Images search produced images which were similar to the previous version of Zynga’s games.

Mattel did not complain about any of these earlier games and does not assert in these proceedings that those earlier games either infringed any of its trade marks or amounted to wrongful passing off. This in my view is a significant piece of evidence as shall be set out further in this judgment. It is clear (see below) that some Mattel employees were not only aware of these games but actually played them either between themselves or with third parties.

This means that even if Mattel won the present action it could not by its decision stop Zynga “reviving” their game. It is likely any action on these would be challenged as an abuse.

The 5^th version launched on 5^th January 2012 is as I have said called “SCRAMBLE WITH FRIENDS” and the images are attached to this judgment.

The green colour has come back and there are rectangular tiles with letters and numbers in. The logo is “Scramble With Friends”. The m appears in a different form and it is possible (as some of the evidence showed) that a quick casual look would give the impression that the word is not “Scramble” but “Scrabble” with a B on its side. However no serious claim is made by Mattel that that is passing off (see below however). Its case stands or falls simply on the use of the word Scrabble or Scramble as set out in my summary of the claims above. Equally although this was raised at various times by Mr Thorley QC during the course of the trial as I have said there is no claim in relation to get up so the fact that the colouring might be said to be similar and that the tiles are now far more like Mattel’s tiles is not the subject matter of any claim before me. It might have arisen (if at all) in the tile registration infringement aspect of the case which is not before me.

Mattel in their Re-Amended Particulars of Claim set out the screen shot at various stages of downloading the Scramble With Friends app as follows:-

In addition to the words “Scramble With Friends” Zynga’s signature red dog is shown in the corner and Zynga is identified.

Thus Mattel claim that Zynga’s use of the signs “Scramble” “Scramble With Friends” and/or the Scramble With Friends device in relation to the game constitutes:-

As regards the SCRABBLE registrations Mattel asserts that the use by Zynga of the sign above constitutes use in the course of trade of a sign which because of its identity or similarity to the Scrabble trade mark and the identity or similarity of goods or services covered by the Scrabble trade mark there exists a likelihood of confusion on the part of the public contrary to Article 9 (1) (b) of the CTMR and/or that the use of the sign which is identical or similar in relation to goods or services where the Scrabble trade mark has a reputation in the Community where use of that sign without due cause takes unfair advantage of the distinctive character or the reputation of the Claimants’ mark.

Its relevant provisions are as follows:-

“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] (Footnote: 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.”

In relation to the UK registered trade mark (the 3 dimensional lettered tile mark) Mattel asserts that Zynga’s use of the Scramble icon constitutes use in the course of a trade where there exists a likelihood of confusion on the part of the public (contrary to section 10 (2) (b) TMA 1994) and/or use of a sign which is identical or similar to the trade mark where the trade mark has a reputation in the United Kingdom and the use of the sign takes unfair advantage or is detrimental to the distinctive character contrary to section 10 (3) TMA 1994.

I have said there is also a passing off action.

First Zynga contends that the UK trade mark no. 2154349 is invalid. This relates to the tiles and has been successful.

Zynga admits that CTM registration no. 401737 for the word SCRABBLE has acquired an enhanced distinctive character and that Mattel has generated goodwill and reputation in this word in the UK but only in respect to board games.

Zynga is apparently the world’s largest social gaming company and leading application software (“app”) developer and retailer. A social game is defined as a digital game as played between 2 or more players over the internet or mobile telecommunications network. It was established in 2007 and by July 2008 it had over 20 million registered users for its digital social games worldwide. By 22^nd May 2012 the figure had reached 290 million in more than 175 countries.

The parties’ respective games have a similar but different mode of operation. The traditional Scrabble game on the physical board gives players seven tiles with differing values on according to the relevant letters. These can then be put on a board in accordance with the rules of the game and a person’s accumulated points are created. The object is to gain as many points as possible. There is generally no time limit and Scrabble the board game can like other such games be played for what seems to be (at least to the losers) excruciatingly long periods. That type of game evolved in the 1950s when there was a marked lack of other outlets for leisure. Television was just coming in and family board games were a common feature of family life (compare Monopoly and Risk). It is an era which is still there but has been overtaken (like the world generally) by the explosion created by the smart phones. This creates a demand for instant action and instant games and instant gratification. Patience is not the name of the game. Thus the aim of Zynga’s Scramble With Friends game is to make as many words as possible from the scrambled letters in a static 4 x 4 grid layout within a particular time. Each word attracts a score which comprises the sum of the value marked on each letter used to make the word.

As I have said above the present Scramble With Friends under attack by Mattel is actually Zynga’s 5^th game. This in my view is significant as I will set out in this judgment later.

Each version of Zynga’s digital social game attracts up to 300,000 users a day and this latest version is apparently the top selling app in the US iTunes store and has been downloaded more than 13 million times worldwide. As at 22nd May 2012 Scramble With Friends had more than 8 million active users and Zynga contends a substantial goodwill and reputation in the United Kingdom and Europe in relation to the social gaming business by reference to the name or mark Zynga and/or the Zynga logo and/or the name and mark With Friends and/or the With Friends logo. It contends the word Scramble is an add-on to its goodwill.

Zynga denies it uses the word Scramble in breach of Mattel’s trade mark registrations because its association With Friends which is different to Mattel’s Scramble trade mark and their mark or logo with the words “With Friends” comprise the dominant and distinctive feature of the SCRAMBLE With Friends sign and the SCRAMBLE With Friends logo respectively and distinguish them from the Scramble trade mark held by Mattel. Thus it is contended the average customer will perceive and understand that Zynga’s marks are conceptually visually and orally distinct from the Scramble trade mark. Further it is denied that there is any likelihood of confusion over the use of the word Scramble within the name of the “SCRAMBLE WITH FRIENDS” digital social game as it is directly descriptive of the nature and type of product that is provided by Zynga (namely it consists of a game by which a user creates words from scrambled letters). The difference between their signs it is contended is sufficient to show there is no similarity between Mattel’s marks and goods and no likelihood of confusion.

In respect of the Scramble trade mark Zynga denies its marks and logo are identical to the trade mark because it uses extra words, a highly distinctive orange stylised font and is adjacent to the distinctive “With Friends” logo. The words “With Friends” comprise the dominant and distinctive feature of the Scramble With Friends sign so that the average consumer will understand and perceive Zynga’s Scramble With Friends sign and logo as a whole and as such they are orally, visually and conceptually distinct from the SCRABBLE trade mark. It further denies there is any likelihood of confusion. It also has its “symbol” red dog but that to my mind has no significance at all. It never barked for me.

Zynga denies it is using the Scramble With Friends sign or logo so as to take unfair advantage of the alleged distinctive character or reputation of the Scramble trade mark and it denies that its mark is an imitation of Mattel’s Scrabble game.

It is fair to say the denials are comprehensive.

In the case of passing off Zynga denies that its games will misrepresent that the game is provided by or with consent of Mattel thereby causing deception. It denies having passed off of its game as being a Mattel game. It repeats its contention that the use of the words “With Friends” indicates that it is part of the With Friends portfolio operated by Zynga unambiguously and originates from it and not Mattel and that use of the word Scramble is entirely descriptive.

Zynga contend that the CTM trade mark no. 6223077 (the SCRAMBLE trade mark) was registered in breach of Article 7 (1) of the CTM Regulation and is therefore invalid.

As this was the trial of an action of a complicated nature when matters were fine tuned it became clear, in order to consider the issues fully as identified in the witness statements, that Mattel had not provided full disclosure, in relation to the 4 earlier SCRAMBLE VERSIONS. In Zynga’s Re-Re-Amended Defence and Counterclaim it made reference to the 4 previous versions of Scramble stating that they started in 2007. As I said in my judgment on 17^th May 2013 during the course of the trial the significance of the paragraph was not clear. It is true that the same point was made fleetingly in paragraphs 33 and 34 where Zynga pleaded that they had used the signs since 2007 with no complaint.

In neither place did Zynga properly explain the significance of that plea.

Nevertheless Zynga were clearly putting the knowledge of Mattel of their products for such period in issue in the trial although it was by no means clear to what purpose. There was no plea of waiver or estoppel or the like.

The latter was compounded by some of Mattel’s evidence. A Ms Cota signed a witness statement in support of Mattel’s application for a speedy trial. In paragraph 20 she said:-

“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.”

Ms Cota did not give evidence at the trial but Mr Karamanos the person who was in charge of the Scrabble group from around 2011 did. In paragraph 51 of his first witness statement dated 8^th March 2013 he said this:-

“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.”

He was echoing Ms Cota when he said “I do know that Zynga’s Scramble app did not register with the management at Mattel until it was released in its current form”. As I said in my judgment of 17^th May 2013 it was opaque and an unusual paragraph to say the least because it shows on the one hand that somebody within Mattel had knowledge but on the other hand the management apparently did not know about it.

In view of these pertinent questions as to the extent of Mattel’s knowledge of any of Zynga’s previous games and what they did about it I ordered Mattel to do a search to see if any alerts were to be found on Mattel’s games server in relation to Zynga’s previous products. I also ordered them to make a search on the server which had any internal communications or documents that dealt with Zynga’s 5 products and disclose all of those. I made a specific order in respect of a laptop that was used by Ms Lee Ann Wong.

This put a lot of pressure on Mattel during the course of the trial but as I commented in that judgment this litigation is between 2 successful and large American corporations. Resources were not and are not an issue in this case as between them.

They accordingly provided disclosure and as a result of that Zynga applied for permission to Re-Re-Re Amend the Defence and Counterclaim.

Initially the draft Re-Re-Re Amended Defence and Counterclaim referred to a large number of Mattel’s witnesses who it is alleged had knowledge of Zynga’s previous games. Mr Thorley QC who with Jeremy Heald appears for Mattel objected quite rightly in my view that that was disproportionate and inappropriate having been made very late during the course of the trial. To allow all of those names to go in as people from whom Mattel would have to take instructions and produce witness statements during the trial was plainly oppressive. Whilst it arose initially from Mattel’s failure to address the issue properly in disclosure nevertheless Zynga aided and abetted it by not challenging the inadequate disclosure and by pleading in the obscure way in which it did the relevance of this knowledge. Further it did not make the application until the middle of the trial. Accordingly I limited Mattel’s requirements to take instructions from 3 witnesses only who feature in the Re-Re-Re Amended Defence and Counterclaim (namely Cynthia Neiman, Heather Litfin and Cindy Ledermann).

This disclosure produced this Re-Re-Re Amended Defence and Counterclaim with a new paragraph 12A. In that paragraph Zynga set out that Mattel employed a brand manager and an assistant brand manager to the Scrabble brand whose jobs were to market the brand as effectively as possible including identifying perceived threats to the brand. Further Zynga asserted that other employees within the games division although not specifically tasked with identifying perceived threats would be expected to do so.

It is then said that all of the 3 people referred to above were aware of one or more versions of Zynga’s previous Scramble games. The conclusion is that I should infer that because they did nothing Mattel did not perceive any threat to the Scrabble brand and that if it had done so this would have been mentioned or escalated to the superiors.

The reason for the last sentence is that the obscure paragraphs of Mr Karamanos and Ms Cota were supported by the search which showed no material reaching the executive levels at Mattel in respect of the previous games.

Zynga repeated that allegation (paragraph 40 A (b) (a)) in defence to the claim for passing off.

Mattel allege infringement of the Scramble trade mark under Articles 9 (1) (a) and (b) CTMR and infringement of the Scrabble trade marks under Articles 9 (1) (b) and (c) CTMR (see above).

Arnold J in Datacard v Eagle [2011] EWHC 244 (Pat) [2011] RPC 17 said six conditions are required to establish a case of “double indentity infringement” as follows:-

“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]”.

The conditions in issue are (iv) sign identical and (vi) affecting the functions of the trade mark.

Under Article 9 (1) (b) Mattel allege both the Scramble trade mark and the Scrabble trade marks are infringed. There have been a large number of cases in the CJEU concerning the likelihood of confusion. They were summarised by Kitchin LJ in Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWHC Civ 24; [2012] FSR 19 as follows:-

Kitchin LJ also addressed the likelihood of confusion at paragraphs 86 and 87:-

“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.”

The differing approach from Arnold J (see Red Bull v Sun Marks [2012] EWHC 1929 paragraph 78) appears to be theoretical rather than actual. It seems to me that on the question of confusion you consider it from the perspective of the average consumer of the goods or services in question and take into account all the circumstances. I do not believe the cases say anything more than that.

The requirements for a Claimant to establish a case in passing off were dealt by Lord Oliver in Reckitt & Coleman v Borden [1990] 1 WLR 491 H.L. at 499 E-H as follows:-

“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.”

The claims under the allegations of trade mark infringement and passing off require different members of the public to be affected by the Defendant’s conduct I referred to this in A&E Television Networks LLC v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch) at paragraphs 127-129:-

“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.”

The major evidence provided by Mattel was that of Nick Karamanos who was from July 2011 to February 2013 the Vice President of Mattel Games Global Marketing. He had responsibility for the global marketing of Scrabble. He joined Mattel in 2003 and continues to be employed by it. The second witness as to fact was Philip Nelkon. He held the position of managing promotions at Mattel when he left Mattel and became a consultant to Mattel in 2013. He is an interesting witness because he has been a competitive Scrabble player since 1974. He is the author of a number of books on Scrabble.

Mattel conducted consumer surveys which it relied upon as statistically valid surveys. Given the controversy over surveys in this area of law I shall refer to this in more detail later in this judgment. None of the persons who responded to the survey was called by Mattel as a live witness.

Mattel produced an expert Philip Malivoire an independent market research consultant who was instructed to design and oversee the conduct of the surveys. He gave evidence as to how the surveys were designed, implemented, their statistical reliability and the compliance with what is known as the Whitford Survey Guidelines. Finally he gave an analysis of the results of the surveys. He has significant experience in the field of surveys.

Zynga called 3 fact witnesses. The first was Linda Kim Senior Director of Mobile Partnerships at Zynga. Her evidence related to the process by which consumers obtain Apps and whether actual confusion is demonstrated by the publicly posted customer reviews of Scramble With Friends and records of customer service enquiries disclosed by Zynga. Next was Justin Cooper a User Experience Director at Zynga. He was responsible for overseeing the design and the development of Zynga’s Scramble With Friends game.

Next was Kevin Kurtz a Senior Director of Product Marketing in the Mobile Division at Zynga. His evidence related to the use of the words “With Friends” and also to third party users of the word “Scramble”.

Zynga had an expert John Kelly but in the event his evidence was not relied upon by it.

On 18^th April 2013 Mattel served a table pursuant to the Civil Evidence Act 1995 under CPR 33.2. That table listed a total of approximately 176 pages of Twitter posts, iTunes reviews and extracts from Zynga’s customer service database. It was stated in the Notice that Mattel intended to rely upon the documents as evidence of the truth of matters stated. No makers of any of the statements were called because “they are members of the public and their whereabouts was unknown and/or it was disproportionate to do so”.

Unidentified unchallengeable hearsay statements made by people whose identity is unknown and which is not tested in court carry in my view no significant weight whatsoever. These documents do not assist me to come to the conclusions necessary to deliver the judgment in this case. They have in my view no weight.

As a result of orders for disclosure made during the trial both sides produced further witness statements. In the case of Mattel the evidence was designed to show the true nature of the extent of the knowledge of previous versions of Scramble within the organisation of Mattel. That led to a number of witness statements being produced and further live evidence being given by video link in respect of those matters.

Zynga were ordered to produce by way of disclosure internal documents in relation to the creation of the name Scramble With Friends. They produced one witness in respect of that by video link and he was cross examined.

This area of evidence has attracted significant judgments. I refer to the decision of the Court of Appeal in Interflora Inc v Marks & Spencer PLC [2012] EWCA Civ 1501at paragraphs [26-44] (“Interflora 1”).

As I have set out above to establish breaches of a trade mark it must be shown that there is a likelihood of confusion whereas for passing off there must be a likelihood of deception. A substantial number of members of the public need to be deceived. This requirement is the factor which has bedevilled survey evidence. In Interflora1 at paragraph 74-75 Lewison LJ (with whom Etherton LJ and Hughes LJ agreed) approved the analysis of the Federal Court of Australia in Arnotts Ltd v Trade Practice Commission [1990] FCA 473 where the Court considered survey evidence should only be admitted if the survey complied with criteria for reliability which closely resembled the guidelines. Surveys that are not fully compliant with the Whitford guidelines are not useful (see Lewison LJ in Interflora 1 at paragraph 76).

I referred to this analysis in Interflora 1 in the AETN case at paragraphs 101-119. In the event I did not apply those criteria to the surveys in that case. However I determined that the surveys produced by the Claimants in that case had no evidential value.

Mattel had 2 surveys. The first was a “point of sale” survey (“POS”) and the second was the “Icon” survey. Mattel had permission to produce these surveys as evidence but that permission was granted by Master Bragge before Interflora 1 and 2. The details of the surveys and their compilation was set out in Mr Malivoire’s evidence and summarised in Appendix C of Mattel’s openings. None of the persons who were involved in obtaining or giving the answers to the survey was called.

The lack of those witnesses was fatal to their evidential worth. It is well known and understood (and rightly in my view) that the best way for evidence to be tested is for the witness to give live evidence and be cross examined on that live evidence. This is not merely for the benefit of the parties wishing to challenge that evidence; it is also for the witness to present his or her evidence to the Court to persuade the Court by the manner of its delivery and response to questions that it is evidence to be believed and to clarify any doubts, inconsistencies or questions that might arise out of the substantive evidence in the witness statements. Thus it gives the witness and those challenging the evidence the fullest opportunity to examine and cross examine that witness in the presence of the Judge. It is not possible to overstate in my view the value of witness demeanour (subject of course to well known checks such as ensuring that the witness is not bullied and has a reasonable opportunity to present his evidence and deal with cross examination and the like). The confrontation is an essential part of the trial process in the Courts in England and Wales.

Where the evidence is served under hearsay notices or as a result of questionnaires where the answers are written down by the people administering the questionnaires there is a clear dilution. Any difficulties or ambiguities will not be capable of being explored because no one is giving evidence. Further the answers in the questionnaires (and indeed the witnesses if witness statements or witness summaries are served see what happened in the AETN case) are vital. If they do not accurately reflect what was said there is a further distortion. That was graphically exposed in the AETN case with the Claimants’ witness summaries. All of this devalues such evidence. As Lewison LJ said in Interflora 2 [2013] EWCA Civ 319:-

“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.”

In the present case the surveys would not have survived that test if it had been applied on the application to produce them before Master Bragge. The real destruction of this evidence was in the cross examination of Mr Malivoire. I do not propose to set that out but in my judgment his reasons for structuring the surveys and the questions to be posed and the analysis of the evidence of the answers as written down by the interviewers was comprehensively destroyed by Mr Mellor QC in cross examination. This was further exacerbated by the fact that Mr Malivoire himself did not conduct any of the interviews. It meant that the assessment of the persons whose statements were being taken in the survey was at best second hand and at worst subject to several potential changes dependent on how the answers were recorded and how Mr Malivoire analysed those answers.

Separately the evidence (if that is the right word to use) of the downloads produced by both parties of Twitter and other matters on the internet was even worse. That is not to say of course that hearsay evidence will never be of value but it does mean that in cases like this untested evidence taken by third parties who themselves do not give evidence will generally be given little weight when those statements cover contentious matters.

Two examples of the flawed nature of Mr Malivoire’s evidence are set out in Zynga’s closings (paragraphs 153-155). I accept the submission that Mr Malivoire’s third screening criteria contaminated and invalidated the entire sample because the wrong question was asked. It surely would not be enough to ask whether a person was “familiar” with a smartphone as opposed to owning one and there was no indication as to what people even understood by the term “smartphone”. The sample should have been screened to exclude those who might own a smartphone but simply “don’t do Apps”. For my own part I would have fallen into such category owning a smartphone but being part of a declining size of the population who believes phones are to be used for telephoning people and receiving calls. At closing said “I don’t do Apps”. Somebody in that position if asked to participate in the survey would in my view provide no evidence of assistance whatsoever in respect of the present dispute.

The other criticisms are well made out. I accept for the reasons set out in Zynga’s skeleton that the surveys have no evidential weight whatsoever.

Cases like these are almost always self evidently fact based.

It is for the Judge to determine the facts. He does that self evidently on analysing the evidence. He analyses the evidence taking into account its weight and relevance.

The judicial impression is not to be excluded. In Neutrogena Corporation v Golden Ltd [1996] RPC 47 at 482.15 Jacob J as he then was said:-

“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] R.P.C. 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.”

This was amplified in Interflora 1 at paragraph 84 where Lewison LJ was commenting on the various Courts in GETrademark [1973] RPC 297 at paragraphs 82-85 as follows:-

“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.

Mr Thorley QC in his opening presented Mattel’s case as being a very simple one, stating “our case is very simple but this is a case of first impression. The likelihood of confusion is manifest, therefore we do not need to prove our case by producing actual incidents of confusion or of identifying witnesses, which Lewison LJ would not approve of if we put it into the witness box. My Lord, we rely on the survey as confirming the conclusion that we would invite your Lordship to draw without the survey…..” (T1/23).

He amplified this further in arguments as follows:-

“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

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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.”

Mr Mellor QC did not disagree with this approach. The difficulty with adopting the judicial instinct approach is that as the cases above show it is not a question of whether or not the Judge would be confused. In applying his instinct the Judge must have regard to the fact that he must consider whether or not in the case of trade mark infringement the question is whether or not the average consumer would be deceived and in the case of passing off whether a substantial proportion of the relevant public are deceived such that the deception causes real damage. It is not as I have said a question of whether the Judge would thus be deceived unless of course the Judge considers himself as being in one or other of those categories. In the AETN case for example I considered I was not an average consumer but I would be part of the relevant public for the purpose of passing off. In the present case whilst I have a smartphone this whole area is completely alien to me.

It follows from that that I must be very careful in considering my instinct to the case.

This is what Jacobs J is in effect saying in the Neutrogena case. A Judge can have an instinctive view but he must consider that in the context of evidence and the worth of that evidence.

There were some aspects of both sides’ cases as initially presented that were troubling.

In paragraph 26 of his witness statement Mr Karamanos gave evidence about what he thought when he saw Zynga’s scramble with friends app (in early 2012). He said he was “furious”. The thing that first struck him was the use of the word “Scramble” because he said it looked and sounded like “Scrabble”. It is fair to say that the stylised logo for the Scramble with friends app to my mind instinctively could easily be confused without careful looking as using the word Scrabble. The letter “m” in the logo has been turned on its side and it is difficult to see what the actual letter is. Nor was the purpose of this tilting of the letter explained.

The difficulty about this fury is that the previous versions all have the same word “Scramble” in them but that did not attract Mr Karamanos’ fury. I take on board the fact that Mr Karamanos really only had any responsibility when he was promoted to Vice President of the Mattel Games Global Marketing in July 2011. By that time at least 3 of the previous versions had been released. That to my mind is not a justification for not finding out about previous matters. On being questioned about this (T1/131) his answers in my view were vague. I would have expected somebody of his status to make himself aware of potential competitors’ games and take that up with the staff. He does not have apparently anything beyond what he called general conversations about competitive products. In paragraph 52 of his witness statement he alluded to the earlier versions of “Scramble” in late 2007 or 2008 and he observed that he was not aware of the success of products 1-4 but said “I do know that Zynga’s Scramble app did not register with the management at Mattel until it was released in its current form”.

As I said in the Judgment on the application for disclosure that was a paragraph which cried out for investigation or clarification. Mr Karamanos’ answers on cross examination of that paragraph were unsatisfactory (see T1/137-147). He was unable to identify the source of the people who had knowledge of the previous versions and how he came to the conclusion that knowledge of those versions did not register with management (see page 138). His evidence was completely unsatisfactory.

There was a second significant point on this question of knowledge. In June 2010 Mattel made a pitch for a licence to produce physical versions of Zynga’s games. That was before Mr Karamanos’ involvement in the games division. However a second pitch took place either in December 2011 or late January 2012. At that time Mattel were aware that it was competing with Hasbro for the Zynga business.

I should explain the significance of that. Mattel have the rights to Scrabble worldwide except in the United States and Canada. Hasbro has the rights in those territories. Zynga trades both outside and inside the United States and Canada. However if there is an infringement of any rights attached to Scrabble within those jurisdictions Mattel cannot sue; the organisation to litigate would be Hasbro.

The fact that Mattel were negotiating with Zynga for a licence to make board games of the Zynga products is to my mind startling in the context of the present litigation. Mattel’s case is that Zynga’s products infringe its trade marks and are a wrongful passing off of its products as being associated with Mattel. Four previous versions had been produced which on any view on Mattel’s case as it is now presented would have infringed its trade marks at the very least. Nothing is done about that. That is not the point however under discussion. Mattel is negotiating with Zynga for a licence to manufacture Zynga’s products which are themselves creations it is said in breach of Mattel’s rights.

Mattel were competing with Hasbro for this operation. Mattel might not have known that before February 2012 when the successful link up with Hasbro and Zynga was announced.

Significantly Mr Karamanos participated in the January 2012 pitch (T1/141). That pitch took place after he first saw the Zynga Scramble app which had made him furious. I set out the questions and answers that were put to him on this point:-

“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.

The answers are unsatisfactory. It is difficult to understand Mr Karamanos in January 2012 allegedly being “furious”about Zynga’s fifth version and at the same time entering into negotiations to obtain a licence to convert that into a board game without mentioning his fury to Zynga. I find it impossible to accept that Mattel in effect kept in their pocket a claim that they believed would be substantial (see this case) whilst negotiating a licence to manufacture the products which were infringing their own trade marks and were an actionable passing off.

Mr Karamanos accepted two things. First that it was highly unlikely if the pitch had been successful for the board games that Mattel would have sued Zynga and second that the reality was that Mattel was interested in board games and not apps (page 146-147). The present litigation only ensued after Mattel lost out to Hasbro.

The consequences of this in my view are significant. The lack of activity in relation to the previous four versions (on analysis of the evidence below) shows that those who were watching did not believe that Zynga’s products were a threat or an infringement of Mattel’s rights. Had they believed so something would have been done but nothing was done. This “relaxed” attitude was equally apparent in January 2012 after the fifth version was launched. I simply do not accept that Mr Karamanos was “furious” in January 2012. The reality as his answer shows is that Mattel wanted board games and it wanted board games that were based on the apps made by Zynga. That was despite the fact that according to this case Zynga’s apps (including the one launched during the negotiations or before them) infringed Mattel’s rights.

There is no plea of waiver or estoppel by Zynga in relation to Mattel’s conduct over this aspect of Mattel’s case. Bad faith has been alleged but is no longer relied upon. Thus Zynga do not say the present claim is prosecuted in bad faith. However that is not the end of the matter.

I approach this evidence as showing that in reality Mattel did not believe that Zynga’s various products infringed their rights. Alternatively it did not believe that they damaged Mattel’s rights. No other conclusion is possible from their inactivity as set out above.

A similar situation occurred in the AETN case. There the Claimant was seeking to stop the Defendant from calling one of its channels “Discovery History” asserting it had rights over the word “History”. The difficulty was that several years before the action the BBC announced a new channel “UK History”. Despite the fact that it was an identical infringement of that put forward in the action all AETN did was write a letter which was firmly rebuffed by the then Director General of the BBC Greg Dyke. This in my view was a strong piece of evidence that the silence for 7 years meant that AETN did not seriously believe that another channel which used the word History which was merely descriptive of the programmes was something that was capable of protection. Further in my view it showed that the use of the word History could not assert goodwill in the use of that word when other businesses use the same word and led me to the conclusion that there was no serious belief that there was confusion and damage. As I said the evidence while not determinative was strongly probative (see paragraphs 79-85 of that judgment).

This is the same. It is possible for Mattel to have had a mistaken belief earlier and then to have realised the error of its ways and sought to assert its rights. No such evidence has been led. I have been given no clear explanation for the change in attitude. As I have said there is no pleaded claim of waiver or any other matter asserted which Zynga says deprives Mattel from asserting its rights. However it is as I have said a matter of evidence and the impact that has. For many years Mattel were aware of the use of the word Scramble and did nothing about it.

Further that was not limited to Zynga’s use of the word Scramble in its previous versions. In tab 2 and 5 of the PWS Bundle Zynga produced a large number of games going back decades which use the word Scramble. None of these competitors attracted any interest from Mattel until after the present proceedings. Thereafter was a sudden change and Mattel’s solicitors have since the commencement of these proceedings adopted an aggressive stance against users of the word Scramble. In my view that is “shutting the stable door after the horse has bolted and has had time to turn around and laugh at you”. It is unimpressive. The fact that they are pursuing people aggressively now and even if some of those people are capitulating does not impress me. The real test of what Mattel believed is not what they are doing during the currency of the present litigation but what they did when there was no litigation. In that period, when action was not being taken for the purpose of the litigation, it did absolutely nothing.

The reason given for doing nothing was not actually that nothing was done but that it was not done at a managerial level as Mr Karamanos endeavoured to show. That cryptic paragraph of his witness statement ought to have been pursued earlier but it was not. Further Mattel did not provide disclosure of any internal documentation in relation to Scramble versions 1-4. This led Zynga to make an application for disclosure of such material during the course of the trial. I granted that disclosure. It was an expensive and difficult exercise but as I said resources were not an issue in this case. The ensuing disclosure led Zynga to seek to Re-Re-Amend its Defence and Counterclaim. That was opposed but I acceded to the application in a judgment dated 13^th June 2013. An application for permission to appeal that judgment was dismissed by the Court of Appeal. That amendment after some truncation during argument was permitted to enable Zynga to assert (see paragraphs 12A-12D) that employees including a senior employee (Cynthia Neiman) were aware of the use by Zynga of the word Scramble. This led Zynga to submit that the Court should infer that they and thus Mattel did not perceive the previous versions as being any threat to the Scrabble brand and that they could not give rise to any confusion or damage to the Scrabble brand and that the Scramble digital social games were not free riding upon the reputation of the Scrabble brand.

Zynga also relied upon those matters as evidence showing that there was no likelihood of confusion on the part of the public including a likelihood of association between Scrabble trade marks and Zynga’s use of Scramble With Friends.

I limited the number of witnesses which were required to be considered by Mattel. Four of them Lee Ann Wong, Heather Litfin, Cynthia Neiman and Donna Bannister gave evidence by video link on 8^th July 2013. Zynga accepts they were doing their best to assist the Court. These witnesses were not particularly helpful but it is clear they were aware of Zynga’s use of the word Scramble in earlier games. The responsibility however fell on Cynthia Neiman. She was then the Vice President of Games and moved on to a new role in May 2008.

Mr Karamanos’ evidence was to the effect that Mattel did as much as they could to monitor electronic and online games around the world (T9/130/6-9). Electronic games were considered a threat to Mattel’s business.

That does not of course rest easily with paragraph 52 of his witness statement above. Nor does it appear to rest easily with the evidence of Ms Wong, Ms Litfin, Ms Neiman and Ms Bannister above. Finally and significantly it does not appear to rest easily with Cynthia Neiman. She had a managerial role that specifically covered digital games including Scrabble digital games. Further she was actually playing Zynga’s Scramble app in 2009 but had never actually apparently played “Scramble With Friends”. I struggle to find any clear evidence as to who was responsible for monitoring potential threats. She thought it was the legal department (T9/1024). Yet she gave evidence of 2 cases that were problematic Scrabulous and Words With Friends where action was taken. Litigation ensued between Mattel and Zynga over Words With Friends but that litigation is in France and was commenced on 16^th March 2012. She did not consider it her responsibility but limited it to possibly the legal team or possibly those responsible for the individual brands themselves. If she came across things she thought were problematic she would refer them to the attention of the brand team or the legal team.

In paragraph 15 of her witness statement she recalled seeing and playing Zynga’s Scramble game although she could not recall precisely when she said “I did think about whether it could be a copy of Scrabble probably because of the name but when I played the game it did not seem like the same game to me….” In cross examination (T9/107-14) she said “I mean, the name did not jump out to me, you know, as being something significant. I was really focused on the game play and it was more, for me, one of many games I was playing and I did not see the need or, it did not call out to me be similar enough to Scrabble to warrant a conversation with the legal department…” If that is the correct position in reality it is completely destructive of Mattel’s case which is based entirely on complaints about the use of the word “Scramble” either on its own or with “Friends”. There is no claim based on “get up” or infringement by the nature of the game. The only possible issue outwith the use of the word “Scramble” was the tile claim and that has now been dismissed by the Court of Appeal. This shows contrary to Mr Thorley QC’s opening that his witness does not see this as a plain and obvious case.

It is of course for me to decide whether or not the use of the word Scramble on its own or With Friends infringes the relevant trade marks or constitutes a passing off. Nevertheless as I have said above in a case like this the attitude of the parties is a significant piece of evidence to help me come to the decision. If people act in a certain way when there is no litigation in prospect or being contemplated at the time which is at variance to the stance they have taken in the litigation a Court would usually consider that the true position was that taken or conduct taking place as being the genuine position as opposed to the stance being put forward in support of the claim.

It is clear that people within Mattel culminating in Ms Neiman did police in some way other gaming activities to see whether there were infringements of Mattel’s rights. That is shown by the proceedings that were actually instituted. (I am not referring to the claims made by Bird & Bird post litigation which I regard as being of little significance). The reality is that until this litigation was commenced Mattel was apparently completely unconcerned about the use of the word Scramble by Zynga and by the large cohort of others using the word Scramble. It did not jump out to Ms Neiman.

There are two possible reasons for this. One is that Mattel’s review procedures were entirely incompetent and useless so that “they took their eye off the ball possibly never even saw it”. The other is they saw it, considered it and did nothing (reminiscent of what Churchill said about Munroe at Gallipoli “I came, I saw, I capitulated”).

This of course extends to Mr Karamanos’ supposed fury in January 2012. Despite this fury he was quite happy for Mattel to negotiate a licence to manufacture a board game based on Zynga’s product when that product according to this case infringed Mattel’s own rights. Why would they negotiate a licence fee which presumably would include substantial payments if they could have done it anyway because the relevant products which they were going to convert to board games were covered by their own rights?

If I accept the evidence of Mr Moore and Mr Karamanos’ evidence that Mattel would do as much as they can to monitor electronic and online games around the world they could not possibly have missed the use of the word “Scramble” by Zynga and the gathered clan. The fact that they did nothing demonstrates in my view that they did not perceive before January 2012 that the use of the word “Scramble” whether on its own or in association With Friends infringed any of their rights. That is reinforced by the actions that Mattel did during this period summarised in paragraph 136 of Zynga’s closing.

I should deal with the evidence of Mr Nelkon. He is an avid Scrabble player and has had extensive roles within Mattel concerning the development of Scrabble and selling it. He establishes that there is clearly a significant goodwill and interest in the word Scrabble. That is not disputed by Zynga.

In paragraph 38 of his witness statement he expresses a view that Scramble was an aspect of concern to him. First the word “Scramble” is very similar to the word Scrabble and the second that it is branded with a tile. Third is an oblong using a rounded font and includes the colour red against the green background and finally states that the name Scramble calls to mind Mattel’s Scrabble game.

The only one for my consideration is the first point.

Mr Nelkon was as Zynga accept a straightforward witness. He had an immense loyalty to the Scrabble brand and was clearly regarded as being a big player in the Scrabble world (described by Giles Brandreth in the forward in Mr Nelkon’s book as “a brilliant Scrabble player”). He was shown a vast amount of material relating to original games which showed extensive use of the word Scramble. He was not aware of this because he had not looked for it (T3/342). In an article with a significant date of 16^th January 2012 headed “Scrabble Matters” he covered the sixty golden years of Scrabble and he referred to the Defendant and the 12,000,000 downloads of their Words With Friends game. I found Mr Nelkon’s evidence very useful as setting the scene of the life of Scrabble, how it was created how popular it became as a board game. I was less convinced that he had significant knowledge of the non-board game approach and he clearly did not have any relevant evidence as to the use of the word Scramble extensively as shown by the materials put to him. Mr Nelkon’s evidence therefore was of no use as regards the key point namely the issues over the word Scramble; his evidence merely was of use to confirm that which was accepted namely that Scrabble had a reputation that was worldwide.

Mr Moore is an in-house legal counsel at Mattel. His evidence was there for disclosure and in reality the lack of disclosure which led to the order that I made for a further search. He was the first person who raised the lack of management knowledge which I have already dealt with. I do not find his evidence of any assistance.

I find that Mattel internally well knew of Zynga’s use of the word “Scramble” for many years. It went to a middle order executive level (Cynthia Neiman) and they did nothing about it. No explanation has been provided as to why nothing was done about it.

In my view the only conclusion to be drawn is that it did not perceive the use of the word “Scramble” as an infringement of any of Mattel’s rights.

That is supported by the lack of action over the large number of apps details of which were produced in this action which also use the word “Scramble” and which did not attract any attention before the commencement of this action.

The survey evidence does not provide any evidence of confusion because of the criticisms of that survey evidence advanced by Zynga which I have accepted.

The large numbers of documents that were the subject matter of Mattel’s Civil Evidence Act Notice equally were of no weight whatsoever.

It follows that on the evidence Mattel before January 2012 did not perceive there to be any confusion by anybody who used the word Scramble. The only reason why they pursued Zynga in this action in my view was because of their dashed expectations over the joint venture. The circumstances of the joint venture are completely destructive of Mattel’s case that it had rights that were infringed by use of the word Scramble. Either Mattel conducted negotiations dishonestly i.e. they were negotiating with Zynga whilst keeping in their pocket a claim against Zynga that Zynga’s products infringed their rights (which I doubt) or it did not feature because they still did not consider they had any actionable claim as late as January 2012.

It follows from the absence of evidence of confusion that the only basis for consideration for whether or not there is a likelihood of confusion is that of the judicial instinct as identified in the Neutrogena case and conceded by Mr Thorley QC in his opening. That judicial opinion however only has the evidence of inactivity on the part of Mattel for assistance as to the decision.

I have two concerns about Zynga’s evidence.

First Zynga was required to produce witness statements as to the gestation of the use of the word Scramble. That produced (for example) a statement from Justin Thomas Waldron who was a Vice President of Zynga and was one of the co-founders of the company. In his evidence he referred to an email chain in November 2007 concerning the creation of a name for Zynga’s new product. A number of names were considered namely “Jumblr, Word Wise, Mix Up and WordMix”. Mark Pincus on 8^th November 2007 said that he loved Scramble. He was the Chief Executive Officer and the majority shareholder in Zynga at the time. He only ceased to be the Chief Executive Officer the day before Mr Waldron gave evidence. His evidence would have been of assistance in my view and no reason has been given for not calling him. Shortly after that exchange Zynga’s product was launched under the name Scramble.

There was an exchange of emails between Paul Dowd, Tim Hickman with (inter alia) Mark Pincus copied in. In particular Paul Dowd sent the following email:-

“Ok, just double checking that you mean Scramble and not Scrabble. Those to (sic) tend to get mixed up, hehe.”

That was in response to an email from Tim Hickman saying the priorities are (1) Scramble (2) Dope Wars (3) Fastdraw.

Mr Dowd was not called and no reason for him not being called was given. Mr Waldron was cross examined by Mr Thorley QC about the “hehe” email. It was surprising in my view that Mr Waldron did not refer to that email in his evidence (although I accept of course he was not a party to the chain). Nevertheless it was clearly proximate to the decision to arrive on the word Scramble and needed explaining. Mr Pincus could have explained it fully as could Mr Dowd. This failure of Mr Waldron to deal with it in his witness statement was despite the fact that he knew of its existence by the time he came to prepare his witness statement (T9/1047).

Absent any explanation from Zynga I form the conclusion that Mr Dowd at least (and possibly the others) (hence “hehe”) were alive to the possibility that Scramble might be confused with Scrabble. The inevitable conclusion absent any other explanation of (for example Mr Dowd’s form of humour which was put forward by Mr Waldron) is that Mr Dowd for his part perceived potential confusion and thought that Zynga might benefit by it.

The second matter which concerns me was the actual Scramble logo as below:-

I should recall that no intention to deceive on the part of Zynga is pleaded. That would be required to be explicitly pleaded under the CPR and when it was pointed out that it was not pleaded Mr Thorley QC declined the opportunity to amend (T7/823/7-16) and he expressly confirmed that position (T7/823/22-23). I believe that some people in Zynga thought they were sailing close to the wind but I do not accept absent the claim of intention to deceive that they have behaved in a way which is actionable. This is despite the fact that Zynga’s evidence (which only arrived late in the day after judicial promptings) was less than ideal.

To my untutored eye the turning of the letter m onto its side gives the impression that the word is Scrabble. The m at a glance could look like a b. I have had no evidence about this and no cross examination on it. This is barely alluded to in Mattel’s opening (paragraphs 55-59) and its closing (paragraph 125).

In my view for the reasons that I have set out above dealing with the evidence I have no clear evidence to assist me to determine whether or not there is likelihood to be confusion either on the basis of a substantial proportion of the relevant public potentially being deceived (passing off) or whether there is a potential for deception of the average consumer who is deemed to be reasonably well informed and reasonably observant and circumspect (trade mark infringement).

I am reminded of what Asplin J said in B Sky B v Microsoft [2013] EWHC 1826 Ch at paragraphs 83 and 84:-

“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 conclusion on the evidence of the Mattel employees is that they did not believe that there was any realistic prospect of confusion between the words Scrabble and Scramble and that explains their relaxed attitude. By way of contrast I believe that Mr Dowd reflected thoughts internally that there might be some confusion between Scramble and Scrabble but the “hehe” email’s effect should not be overstated. It is insignificant when compared with the internal evidence of Mattel.

I do not accept that the evidence of these sources (as contended by Mattel in its closing) is irrelevant. I accept that they are not determinative but it is evidence which might assist the conclusion that I come to.

I have come to the conclusion that the word Scramble whether on its own or with With Friends does not infringe the Scrabble trade marks. It is not similar and it is not likely to cause confusion for the relevant persons for trade mark infringement and/or passing off. However that is on the basis that any logo which purports to have the word Scramble in it does not itself appear ambiguous. I am firmly of the view that Zynga’s present logo with the m on its side gives the impression that the word is Scrabble when one looks at it quickly and has the propensity to confuse the particular categories of persons identified above in respect of trade marks and passing off. Other than that I do not accept there is any actionable claim against the use of the word Scramble in respect of the Scrabble trade marks.

There is clearly no doubt that if the Scramble trade mark registered by Mattel is valid then Zynga’s use of the word Scramble will infringe that trade mark prima facie.

Zynga says this is not the case.

In its closing it gave four reasons as to why the Scramble registration was invalid or liable to be revoked:-

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

It withdrew the bad faith allegation at the time of the closing submissions.

As in the case of the Scrabble marks and passing off there is no evidence to enable me to decide whether or not there is a likelihood of confusion. However it seems to me self evident and I would so conclude that the use of the word Scramble plainly infringes Mattel’s trade mark registration of Scramble. I do not accept that it is to protect board games only.

Mr Mellor QC with that intellectual agility for which the Bar is well known saw the error of his ways in AETN v Discovery Communications Ltd [2012] EWHC 109 (Ch). He argued in that case (unsuccessfully) that the use of the word “History” was capable of being protected. I rejected that submission on the basis of Office Cleaning Services Ltd v Westminster Window & General Cleaners Ltd [1946] 63 R.P.C. 39.

Mr Thorley QC referred me to the case of Redaway v Banham [1896] AC 199 at 210-211 (a case which Mr Mellor QC relied upon in AETN).

In my view the word “Scramble” is descriptive of the game.

Of course each case is dependant on the facts in each case. My decision on the facts in AETN has no relevance to my decision on the facts in this case.

It accurately describes what is required in the game namely a scramble for words made up by letters in a fixed period of time. It falls therefore within the decision of Office Cleaning in my view.

In addition the evidence before me such as there was shows extensive use of the word “Scramble” in apps for these types of games. The belated attempt by Mattel to shut down that use does not enhance its stance on this point.

Nevertheless in addition to the fact that I determined that “Scramble” is an ordinary English word it is also commonly used in word games and in my view it has become a common name for such games.

Given my findings as set out above in respect of the word “Scramble” I do not see that there is any basis for suggesting that the use of that word is a sign which is identical with or similar to the registered mark in relation to the goods. Nor is it similar. Alternatively the use of that sign does not take unfair advantage of nor is it detrimental to the distinct character or the repute of the CTM (Article 9 (1) (c)). Zynga are using a word which is descriptive of the game and is in the public domain as regards describing games of that nature and is commonly used in word games. I do not see therefore how Article 9 (1) (c) is infringed when Zynga used such a word.

A clever attempt was made to associate ScrambleWith Friends on the basis that the “With Friends” had its own distinctive reputation to which the word Scramble was merely an add on. I find that entirely unconvincing. Further Zynga cannot have it both ways. The word Scramble is either descriptive or common usage as set out above in which case it cannot be protected even by Zynga if it would wish to do so or it is not. I do not see how the use of With Friends would assist Zynga if I had determined that Scramble was not descriptive. Nor as I have said does the dog bark. The word Scramble in its ambiguous appearance predominates above the words “With Friends” and the non- barking dog.

Accordingly the Scramble CTM held by the third Claimant is invalid on the grounds of Article 7 (1) (c) and (d).

Therefore save in respect of the letter “m” in the logo Mattel’s claims fail entirely. I also accede to Zynga’s counterclaim in respect of the Scramble trade mark for the reasons set out above.

I will hear submissions as to the form of order when I hand down the judgment.

I am grateful as ever to Counsel for their careful and comprehensive submissions both written and oral