Taking steps to protect intellectual property

THE Ukrainian lute bears no resemblance to Paul Allan’s national instrument – the bagpipe – but it was a lexical knowledge of the bandura which snared the 42nd National Scrabble Tournament for the Aberdonian recently.

The board game of Scrabble has been trade marked since the 1950s, but owner Mattel has had to go to law to protect its name. Picture: Getty

Mr Allan’s victory, however, has been somewhat overshadowed by a bitter trade mark row, as Scrabble’s manufacturer Mattel battles with a contender to the throne.

The dispute, against the backdrop of the pre-Christmas toy rush, features American app developer Zynga Inc, which has had the chutzpah to launch the online game “Scramble With Friends” – a name which to some appears strikingly similar to Mattel’s registered asset.

At the UK High Court, Mattel argued that Zynga’s use of the word “Scramble” was too close to the word “Scrabble” – a registered trade mark for board games in the UK since the 1950s – and that the similarity could lead to confusion in the marketplace.

High Court Judge Justice Peter Smith, however, disagreed. He dismissed the US toy giant’s argument and held that the word “Scramble” (whether on its own or with the words “With Friends”) does not infringe the “Scrabble” trade marks. Yet all was not lost for Mattel. Justice Smith did accept that a curved letter ‘M’ used in Zynga’s “Scramble With Friends” logo could be confusing as it gives the impression that the word is “Scrabble” when viewed quickly.

The conflict between these gaming giants looks likely to drag on way beyond 25 December, when families across the country will unwrap a £20 version of the board game which has been sold in over 100 countries and in more than 50 languages.

Trade mark

As with so many trade mark issues, Mattel’s battle involved drawing a line around a product, then defending it from all-comers. Christmas for the company will be as much about protecting its intellectual property from usurpers as it is about decorating a tree and exchanging gifts.

Trade marks are signs or symbols which distinguish goods and services from others. Their uses and applications are something we attorneys and lawyers study and develop, often using case law from disputes like those between Zynga and Mattel, to hone the finer points of the law.

We provide the core skills to procure IP rights for clients and to stop people from infringing them. Our work isn’t just about establishing the negative right of stopping someone from infringing ideas. It also helps with the positive side – raising finance for example – and getting as much value for these ideas as is possible.

Our clients in Scotland range from the rare single inventor to university spin-offs in areas such as electronics and biotechnology, through to big oil and gas companies, though the majority are small to medium-sized businesses across all sectors.

Their challenges, as can be imagined, come in all shapes and sizes – and are all too often about shapes and sizes.

Zynga and Mattel have also battled over the validity of the three dimensional Scrabble tiles. Mattel’s UK trade mark registration for the 3D game tile was recently declared invalid on the basis that details on the UK Register of Trade Marks were not precise enough. This decision serves as a good reminder that applicants should take great care when seeking to register any form of registration for their intellectual property rights.

None of this should bother our latest National Scrabble Champion Paul Allan, of course. His victory – using words like kernite, exordial and valerate – will remain unbesmirched for the next 11½ months until he faces the next challenger in a fair and frank exchange of three, four and even five syllable words.

Disputes

In trade mark disputes, those exchanges take place in front of the courts, but also before the Trade Mark Registry, where attorneys from Marks & Clerk are called upon to represent the interests of our clients.

Much of our job involves spotting the difference between what those clients are doing and what is worth protecting – which can sometimes make for rather difficult conversations.

We often find that the inventive people in an organisation have little knowledge of the value of the ideas they have every day.

The commercial people, on the other hand, can often give a more straightforward answer and let us focus our time on the inventions and ideas which are likely to bring long-term benefits to the business.

So while knowing the name of monks in Islam’s Sufi sect could utilise a troublesome Q and raise you ten points at next year’s National Scrabble Tournament, it’s knowing the value of all the knowledge in your hands which will reap real rewards.


• Meena Murrin is a trade mark assistant at Marks & Clerk www.marks-clerk.com/uk

• More information on becoming a Friend of The Scotsman