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Casual Approach to Intellectual Property Can Cost Infringers Dear

Wednesday, 16 October 2013

Zynga, the company behind popular gaming apps Words With Friends and Chess With Friends recently settled its legal action against Bang with Friends Inc in the US.

Zygna’s ‘With Friends’ games are popular among users of smart phones and tablet devices. The games have become synonymous with the games maker Zygna, which claimed casual sex dating app Bang With Friends sought to take advantage of its reputation.

Zynga filed court papers in San Francisco complaining of trade mark infringement.

Background to the Trademark Dispute

Bang With Friends only launched in January 2013 but faced an early legal battle over trade mark infringement of the ‘With Friends’ brand.

Zygna filed court papers to prevent further consumer confusion and protect its intellectual property rights against infringement. It claimed the casual sex app’s name infringed Zygna’s registered trade mark covering games such as Words With Friends and Chess With Friends.

Zygna claimed that Bang With Friends Inc “selected the name Bang With Friends...with Zygna’s game trademarks fully in mind”. Understandably, Zygna did not want its reputable With Friends brand to be associated with a casual-sex dating app.

Out of Court Settlement

If Zynga had succeeded in its trade mark infringement claim in court then Bang with Friends Inc would have been barred from using the name in connection with any social-networking apps in the U.S and would have had to pay Zygna damages. In the event the two sides reached a secret settlement.

“Although the terms of the settlement are confidential, Bang With Friends Inc. acknowledges the trademark rights that Zynga has in its with friends marks and will be changing its corporate name and rebranding its services in the near future,” Bang With Friends said in a statement.

Lessons Learned

These types of intellectual property dispute highlight the need for companies to protect their brands through trade mark registration and also the risks for potential infringers. Fully rebranding a business after time and resources have been expended promoting it can entail crippling costs.

Registering a trade mark will offer the owner of the mark protection against others taking unfair advantage of the reputation of a brand. Under U.K. law a registered trade mark is a useful tool in a brand’s armoury. It is likely to prevent people from using a mark and while some may choose to use it anyway, it makes it much easier for the owner to take legal action against those who use it without permission. Moreover it gives the owner rights which they can then franchise or licence to others for a fee.

Even if the mark is not registered; under U.K. law, the owner may still be able to take action if someone uses the mark without permission through the common law tort of passing off. In order to bring a successful passing off claim the owner of the mark must prove that the mark is theirs, that the mark has a reputation and the owner has suffered harm.

Nevertheless it is easier to bring an action for trade mark infringement and thus a mark should be registered to best protect a brand. For more information please contact James Crichton via e-mail or by telephone on 0207 611 4848.