Hasbro has no appetite for YUMMY DOUGH The toy giant and PLAY-DOH brand owner sued Nährmittel over its UK launch of a powdered dough mix, promoted as “the edible play dough.” Hasbro sued for passing off and trade mark infringement, but Nährmittel counterclaimed for revocation of the PLAY-DOH registration. Nadine Seymour reports on a model Chancery judgment
Who: Hasbro v (1) 123 Nährmittel and (2) MAPS Toys
Where: Patent Court, Royal Courts of Justice (Floyd J)
When: 11 February 2011
Law stated at: 28 February 2011
Hasbro is the proprietor of PLAY DOH as a CTM and two UK registered trade marks in classes 16, 25 and 28 covering the specification "modelling compositions" and "modelling compounds". It sued Nährmittel for trade mark infringement and passing off in its use of strap lines that consisted of "edible play dough" on its packaging for Yummy Dough. The High Court held that the defendants had infringed Hasbro's rights and not acted in accordance with honest commercial practices.
Hasbro has sold a child's pre-mixed compound called Play Doh since the 1950s. The defendants, based in Germany, had been selling an edible modelling compound and in 2007 sought to change the name to YUMMY DOUGH; they sought Hasbro's legal and commercial agreement. Hasbro required that the defendants not use a red background, "play dough" or register in class 28 for toys. The terms were not agreed, but the defendants argued that they did not want confusion with Play Doh because it is not designed to be eaten, and stated that they would not use the term "play dough" because all their marketing materials for Yummy Dough called the product "edible plasticine".
In 2009 following Yummy Dough's launch in the USA, where they had used "the edible modelling clay" strapline, the defendants opted to change their positioning to "edible play dough". In March 2010, Hasbro sued the defendants for trade mark infringement and passing off for their use of the phrases "the edible play dough", "play dough mix" and "coloured edible play dough mix" on their Yummy Dough packaging. The defendants counterclaimed for revocation of the PLAY DOH trade mark, and invoked the defence under Article 6 of the Trade Marks Directive; that the term complained of was indicative of their goods and the defendants' use was in accordance with honest commercial practices.
Floyd J considered the use by the defendants did infringe the mark, took unfair advantage of Hasbro's goodwill, and that they had not acted in accordance with honest practices in industrial and commercial matters.
Floyd J's judgment:
Descriptive trade mark: Validity and Revocation
It was clear from the evidence that PLAY DOH had acquired distinctiveness and renown through use and investment in the brand over a long period of time, despite only being a slight variation in spelling to the generic term "play dough". Floyd J considered at some length the difference between the consumers' day to day use of the phrase "play dough" and the commercial use by Hasbro's competitors, including consideration of how they marketed their products, and whether they used the term "play doh". He took the view that the differences in the use of the term and trade mark combined with the renown of the brand demonstrated that PLAY DOH was a valid trade mark. Therefore the counterclaim for revocation was rejected.
Infringement: Articles 5(1)(a) and (b)
Floyd J held that the use by the defendants was use in a trade mark sense because the phrase "edible play dough" was added to the Yummy Dough brand name; acting as a brand name extension. Further, on a global assessment of the marks the goods of each party were identical, and although spelt differently, the phonetic similarity and minimal visual difference in the spelling of "dough" or "doh" meant that some consumers may not distinguish between Play Doh and the home use of play dough, therefore, connecting Yummy Dough's strap lines to Hasbro's product. He considered the lack of evidence of actual confusion did not prevent Hasbro from establishing a likelihood of confusion.
The acquired distinctiveness and investment in PLAY DOH meant that the mark had the required quality to rely on a claim for unfair advantage under Article 5(2). Floyd J considered that the defendants' use of the strap lines was sufficient to bring about in the consumers' minds the brand of PLAY DOH. The association would cause a detriment to Hasbro's goodwill because consumers would associate eating with the Hasbro product, which was not something Hasbro wanted to encourage because their product was not designed to be eaten. Therefore, the defendants had taken unfair advantage of Hasbro's trade mark.
Honest commercial practices: Article 6 defence
Reliance on this in a commercial use context is less frequent because it requires a trader who adopts a particular phrase that is likely to cause deception to demonstrate why this should be tolerated as an honest practice when other, non-deceptive words would convey the same meaning.
The evidence showed that when planning the packaging and positioning in dispute, the defendants received advice that use of "play dough" there may abuse Hasbro's goodwill. Despite this, they proceeded with their plans and did not seek further or specific advice on the legal position in the UK.
Following the Hotel Cipriani SRC v Cipriani (Grosvenor Street) Ltd  RPC 9 considerations, Floyd J ruled that the evidence of the defendants' decision making process demonstrated the defendants' lack of respect for the PLAY DOH trade mark and its unfair approach in launching despite the likely confusion it would cause.
Why this matters:
The case highlights three key considerations: (1) where a descriptive trade mark is involved the trade mark may receive broad protection where the proprietor has heavily invested and acquired a strong reputation and goodwill. Therefore, as a brand owner with a border line descriptive mark, investment is vital to protect the mark and may help create a broader remit of protection; (2) the absence of evidence of actual confusion may not prevent a finding of infringement/passing off; and (3) the decision on whether the defendant acted in accordance with honest commercial practices may be influenced by evidence of the decision process in adopting the alleged infringing line or phrase. Therefore, due diligence and proper consideration of legal advice prior to commercial action is paramount to the success of a Art 6 honest commercial practice defence.