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Scrabble / scramble: why they shouldn’t have gone to Specsavers


In the second Court of Appeal decision we have written about this month, the Court reined in attempts to extend a principle established in the earlier Specsavers case (Specsavers International Healthcare Ltd v Asda Stores Ltd).

By way of background, both the United Kingdom trade mark statute and the Community Regulation provide that a registered trade mark may enjoy wider protection if it has established an enhanced level of distinctiveness through use. So, where a mark has become a household name (like, say, Kodak or Google) the likelihood of confusion with similar marks generally extends further than for a less recognised mark. In infringement proceedings, the law requires a global assessment of all the relevant factors when considering likelihood of confusion, and, in the Specsavers case, the court found that the Specsavers mark, although registered in black and white (and hence for all colourways) had been used extensively in green, the ‘green version’ of the black and white mark had enhanced distinctiveness through use and, as a result, confusion with the ASDA mark (also green) was more likely. So, Specsavers established that, in general terms, the court is able to look at the manner in which marks have been used in assessing likelihood of confusion, not just at what is on the register.

In J.W. Spear & Sons Limited et al v Zynga Inc, a dispute concerning the trade marks Scrabble and Scramble, the claimant (owner of the Scrabble mark) tried to extend this principle. It argued that the fact that the defendant had at times used the trade mark Scramble with friends on a dark green ground and accompanied by representations of rectangular letter tiles resembling those used in game of Scrabble – both features widely recognised in association with the claimants mark Scrabble – should be taken into account in assessing likelihood of confusion between the two registered marks.

The Court of Appeal held otherwise, pointing out the Specsavers principle concerned use of the [registered] mark not use of elements like background colour which were not part of the mark as registered. Accordingly, it is not possible to claim enhanced distinctiveness for a registered mark through use of elements which are not part of the mark itself, such as background colours or accompanying images of letter tiles. These did not form part of the registered mark (the word Scrabble) and were not be taken into account in assessing likelihood of confusion in connection with infringement of that registered mark.

This decision can be viewed as being in line with Specsavers since, in the earlier case, the colour green was not treated as an additional feature but, rather, the green version of the logo was simply one of a notional range of colourways ‘within’ the black and white representation of the mark on the register.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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