8/13/2019 Trademarks - Popular Words/Phrases - 'Play doh'

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Play Dough is confusingly similar to Play-Doh ®

Enforcing trade marks that may have descriptive connotations is not without difficulty, yet they are oftenthe most desirable for effective and memorable marketing campaigns.

A judgment that was handed down on 11 February 2011, in the high-profile case of Hasbro v 123 Nährmittel

and another is good news for the owners of marks of this nature. It has demonstrated conclusively that,properly cared for, such marks can be robust and their scope of protection wide enough to comfortablysecure their brand a distinctive space in the marketplace.

The reason for this is, in the judge's own words: "the precise basis on which a mark is originally admitted tothe Register does not restrict the scope of protection when one comes to infringement, particularly as amark may grow in strength by reason of acquired distinctiveness".

Hasbro, the global toy manufacturer, claimed that the defendants had infringed various UK and CommunityTrade Marks for the word 'PLAY-DOH' (the market- leading brand of children's modelling compound that wascoined more than 50 years ago). It also asserted its rights in passing off. These claims focused on thedefendants' use of "The Edible Play Dough" and "Play Dough Mix" on its Yummy Dough product packaging andpromotional websites and materials.

The defendants denied infringement and challenged the validity of the PLAY-DOH word marks, claiming thatif they covered use of "Play Dough" then they were devoid of distinctive character. They also argued thatthey should be revoked because the word marks had become the common name in the toy trade for softmodelling compounds. The judge disagreed; the marks were found to be both valid and infringed. Wragge &Co is pleased to have acted for Hasbro in this dispute.

The distinctiveness of the Play-Doh markThe judge concluded that the defendants' conditional or "squeeze" approach to the challenge to thevalidity of the PLAY-DOH was not legitimate. The consideration of the inherent distinctiveness of a markmust focus on the mark as registered and includes a consideration of its visual impact. In addition, a markmay have acquired, or may following registration acquire, distinctive character through use. The scope ofprotection a mark may offer at any point was not relevant to the consideration of its distinctive character.

Having considered a vast amount of evidence relating to 50 years' use and promotion of the PLAY-DOHbrand, Floyd J concluded that the PLAY-DOH word marks had obtained a very high degree of distinctivecharacter through use by Hasbro and its predecessors. This was despite it having a relatively low degree ofinherent distinctiveness when it was first coined in the 1950s due to it incorporating "elements which referto the kind of goods for which [these marks] are registered".

In respect of the evidence used to support the marks' distinctiveness he noted that: "The factors of marketshare, intensity of use, length of use, amount of investment in promotion are all shown in the present caseto be at the extreme end of that which any trade mark proprietor might ever hope to prove".

As a result the judge concluded it is "beyond dispute that PLAY-DOH is a very well known brand". It wasright "that PLAY-DOH is a word that would be instantly recognizable to a lot of mums" and that "the PLAY-DOH marks have achieved the status of household names".

The claims that the PLAY-DOH marks were invalid because they were exclusively descriptive or devoid ofdistinctive character were therefore dismissed, as was the claim for revocation on the basis that PLAY-DOHhad become generic: "The evidence did not establish that PLAY-DOH had become the common name in thetrade, far less that it had become so through any inactivity on the part of Hasbro".

InfringementThe judge found that, although not identical, the defendants' relevant signs including "The Edible PlayDough" are very similar to Hasbro's marks. There was "visual similarity", "strong conceptual similarity" and"phonetic identity".

Further, the defendants' goods are identical to those for which the Hasbro marks are registered.

Applying the global appreciation test and in view of the above findings, Floyd J found there was a likelihoodof confusion as "a significant class of consumers [will be caused] to assume that goods bearing the [TheEdible Play Dough] strap line and goods to which the mark is applied come from the same or linkedundertakings". Therefore infringement was established under article 5(1)(b) of the Trade Marks Directive.For broadly the same reasons passing off was also established.

The judge also concluded there was infringement under article 5.2. This was because the marks had areputation and "the use of signs by the defendant is certainly sufficient to bring the marks to mind in asignificant class of consumers, even if the effect of the signs is not sufficient for them to assume that thereis common origin".

The judge also held that Hasbro had suffered detriment to, and the defendants' had been taking unfairadvantage of, the reputation of Hasbro's marks. It was for Hasbro to decide it did not want its product,which was not designed to be eaten, associated with a product that was promoted as edible. Thedefendants, by associating their product with Hasbro's PLAY-DOH mark, had caused detriment to it.

The defendants were also "misappropriating the cachet which is attached to the marks". In acommunication with the First Defendant, Mr Polko (an investor in the First Defendant) had agreed with the

11.02.11

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8/13/2019 Trademarks - Popular Words/Phrases - 'Play doh'

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First Defendant's suggestion of using The Edible Play Dough on the Yummy Dough product but warned thatsuch use would "touch on Hasbro's high profile". The judge concluded that "Mr Polko got it right" noting, itis "as if they are saying this is the 'Play-Doh' of children's baking mixes".

The descriptive use defenceThe defendants attempted to rely on Article 6 of the Trade Marks Directive as a defence. They claimed thatconsumers perceived Play Dough to be a descriptive term and that they were using it descriptively. Againthe Judge disagreed.

He acknowledged that this term was included as an adjective in the Oxford English Dictionary and there wasevidence that it was used by a proportion of consumers to refer to homemade products and similar.However, it was possible for a sign/mark "to be distinctive to some and merely descriptive to others". Therewas evidence that a proportion of consumers were not aware of such "homely" uses, and bearing in mindimperfect recollection, to them "'play dough' only refers to a commercial product". There was littleevidence of use in commerce by other traders of Play Dough. The context of use was very importantbecause:

"It is wrong to consider the meaning of the words when used in other contexts, such as, inthe present case, in recipes for homemade play dough or craft literature. Moreover, here aselsewhere dictionaries are a dangerous guide if used in isolation. The question in every caseis not the definition of words, but what the average consumer would understand, if he or shesaw the mark in context, that the words were being used to mean".

Furthermore the defendants had not, as required, acted in accordance with honest commercial practices.The judge applied the guidance as to what factors may be relevant set out in the Hotel Cipriani SRL vCipriani (Grosvenor Street) Limited case.

Key to his determination were his findings that the defendants were not only aware of Hasbro's mark allalong, but also that some people involved with the Yummy Dough product thought that use of "play dough"might lead consumers to think that the product was a Hasbro product or that it was "too close" to PLAY-DOH. The defendants were also aware that Hasbro would object to their use but had nevertheless goneahead, possibly because they wrongly assumed it would be impossible for Hasbro to stop them.

Furthermore the defendants had used 'The Edible Play Dough' as a brand extension. In fact, as noted earlierby the judge, the defendants had "gone to lengths to weave the phrase 'the edible play dough' into thenaming of their product as 'YUMMY DOUGH - the edible play dough' not only on the packet but also on thewebsite".

In these circumstances the defendants had not complied with their "duty to act fairly" in relation toHasbro's rights and were not entitled to the protection from infringement offered by Article 6.

Comment

This judgment is also significant from an evidential perspective. It is part of a growing body of judgmentswhere a likelihood of confusion by the average consumer is established without the benefit of any evidenceof "actual confusion" or survey evidence purporting to indicate the likely views of the average consumer.

The judge accepted that the "absence of evidence of actual confusion is not conclusive" as it may be dueto extraneous factors. He was also confident that it was a question upon which he should, and was able to,form his own view without obtaining any assistance from either parties' expert evidence.

He reached his conclusions as to unfair advantage taking and detriment in a similar way by making commonsense inferences from the relevant factors. This is an encouraging sign in view of the obvious practicaldifficulties in providing concrete evidence demonstrating that consumers were more attracted to thedefendants' goods or less attracted to the claimant's goods as a result of the defendants use of its similarsign. Some commentators had suggested that such concrete evidence was required to establishinfringement under article 5.2.

Key Contact Alexandra Brodie , partner, +44 (0)20 7664 0345, alexandra_brodie@wragge.com

Bonit a Trimmer, associa te, bonita_trimmer@wragge.com

John Col dham , associate, john_coldham@wragge.com

This analysis may contain information of general interest about current legal issues, but does not give legaladvice.

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