Dough mix name held to infringe PLAY-DOH mark

United Kingdom
In Hasbro Inc v 123 Nährmittel GmbH ([2011] EWHC 199 (Ch), February 11 2011), the Chancery Division of the High Court of England and Wales has held that the defendants had infringed Hasbro Inc’s PLAY-DOH mark and passed off their goods as those of Hasbro.

Hasbro makes and sells a children's modelling product under the PLAY-DOH mark, which is registered in the United Kingdom and as a Community trademark. The first defendant manufactured (and sold through the second defendant) a powdered dough mix called Yummy Dough, which, unlike Play-Doh, was specifically intended to be eaten in either raw or baked form.

Hasbro did not object to Yummy Dough, but to the strapline "The edible play dough!" and the terms "play dough mix" and "coloured edible play dough mix", which appeared on the packaging. It alleged trademark infringement and passing off.

The defendants counterclaimed for:
  • a declaration that the registrations for PLAY-DOH were invalid, as they lacked distinctiveness or were descriptive; and
  • revocation of the registrations on the grounds that PLAY DOUGH is the common name in the trade for modelling compounds.
They also claimed a defence under Article 6 of the EU Trademarks Directive (2008/95/EC) in that the use of the objected terms was an indication of the kind of goods that they sold, and that such use was in accordance with honest practices in industrial or commercial matters.

While PLAY DOUGH was not identical to PLAY-DOH (hence there was no infringement under Article 5(1)(a) of the directive), they were considered similar and fell within Article 5(1)(b), under which a likelihood of confusion must be established. Applying Och-Ziff Management Europe Ltd v Och Capital LLP (for further details please see "Och! Initial interest confusion sufficient to establish infringement"), the court confirmed that likelihood of confusion had to be appreciated globally, taking account of all relevant factors. Finding for Hasbro, the court held that:
  • "the edible play dough" was used in a trademark sense; and
  • the use of the definitive article 'the' emphasised to consumers that Yummy Dough was the edible version of Play-Doh, leading consumers to recollect, perfectly or imperfectly, the mark PLAY-DOH and assume that the goods came from the same or a linked undertaking.
As to passing off, the court considered the elements set out in the decision of the House of Lords in Reckitt & Colman Products Ltd v Borden Inc ([1990] RPC 341 (HL)), namely:
  • goodwill;
  • misrepresentation by the defendant (intentional or not); and
  • damage suffered or likely to be suffered by the claimant.
Applying these to the facts of the case, Hasbro's claim of passing off also succeeded.

Further, the defendants failed in their attempt, pursuant to Article 12(2)(a) of the directive, to revoke Hasbro's PLAY-DOH registrations on the basis that it had become the common name in the trade for modelling compounds. No evidence had been adduced to show that this was the case. They also failed in their counterclaim for invalidity, pursuant to Article 3 of the directive, in that the PLAY-DOH registrations were descriptive and devoid of distinctive character. The court confirmed that an assessment of distinctive character must be undertaken by way of an overall assessment performed through the eyes of the "average consumer". While 'play' was descriptive of toys and 'doh' the phonetic equivalent of 'dough', this was but one factor with others comprising the market share, intensity of use, length of use and amount of investment in promotion of PLAY-DOH. From these factors, it was held that PLAY-DOH would be instantly recognisable as denoting the Hasbro product and viewed as a mark of origin.

Lastly, the Article 6 defence failed as it was found, among other things, that the first defendant was aware of the PLAY-DOH registrations from the outset and that the use of the strap line "edible play dough" took unfair advantage of the repute of the PLAY-DOH mark. This would allow the defendants to profit from it, with the result that the defendants had not complied with the duty to act fairly in relation to the rights of a trademark owner.

John Olsen and James Dunne, Edwards Angell Palmer & Dodge UK LLP, London

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