"Let the evidence wash over you": instinctive judges, notional beasts and the game of litigating Scrabble

It's not yet available on BAILII, but the decision of Mr Justice Peter Smith (Chancery Division, England and Wales) in the latest episode of JW Spear & Sons Ltd & Another v Zynga, Inc [2013] EWHC 3348 (Ch) (on which see earlier Katposts here and here) is well worth a read. In short, Peter Smith J threw out all of JW Spear's (i.e. Mattel's) claims for trade mark infringement and passing off which the proprietors of various SCRABBLE and SCRAMBLE trade marks had brought against the operators of an online game called "Scramble with friends"; there was one small crumb of comfort for Mattel, though: if its Community trade mark for the word SCRAMBLE had been valid, Zynga would have been infringing it. Another crumb of comfort, tucked away towards the end of the judgment, was where the judge agreed that Zynga’s present logo with the "m" on its side gave the impression that the word was "Scrabble" if looked at quickly, for the purposes of both trade mark and passing off law -- but there was no other problem with Zynga's use of the word "Scramble".

Like some of the earlier intellectual property law judgments of Peter Smith J, this one focuses rather more on the facts than on detailed analyses of the law -- and the judge was fully aware of his importance in the fact-finding process. After discarding all of the survey evidence ("the surveys have no evidential weight whatsoever"), he recites a charming little dialogue with Simon Thorley QC (who led for the claimants) which includes the following passage:

MR. JUSTICE PETER SMITH: I am quite happy to decide the case on my instinct, but I am not sure what my instinct is at the moment. I think that is the right view to have at this stage. 

MR. THORLEY: Absolutely. I think your Lordship has to let the evidence wash over you. 

MR. JUSTICE PETER SMITH: I agree. 

MR. THORLEY: And at the end of the day you come together and say, right, what would the average consumer think? One of course has to avoid the trap of thinking that one is the average consumer. 

MR. JUSTICE PETER SMITH: I avoided that trap in the last case I decided on this, because I decided I was an average consumer. 

MR. SIMON THORLEY QC: I think, but in this that is why I told you what I did and did not do. I am not an average consumer in this market. 

MR. THORLEY: That probably places your Lordship in a better position to come to the case with no preconceived views, but to be able to allow, as I put it, the evidence to wash over you and come to a conclusion at the end. I do not think either side is suggesting that there is a decisive piece of evidence here, a sort of road to Damascus moment when everybody said it is quite plain this is the answer. This is a question of evidence on one side, evidence on the other, what is the likely reaction of the average consumer, that notional beast. 

MR. JUSTICE PETER SMITH: And a slightly different beast in passing off. 

MR. THORLEY: It is a slightly different beast for the purposes of passing off, yes.

Ultimately, notes Merpel, the judge was influenced not only by a lack of admissible and probative evidence but by his assessment that Mattel's own employees were not only not confused by the appearance of Zynga's game but played it themselves.

How not to lose at Scrabble here
Why Boggle is better than Scrabble here