Hasbro’s modelling clay for children, sold under the PLAYDOH mark, has been in existence since the 1950s. Hasbro owns UK and Community trade marks for the words PLAYDOH. Hasbro’s product is not intended to be eaten.
Nahrmittel began selling its product, branded YUMMY DOUGH, a powdered dough mix designed to be played with and eaten, in the United Kingdom in 2009/2010. Hasbro objected to the use of the strapline, THE EDIBLE PLAY DOUGH!, which appeared on the packaging underneath the brand name and the use of the words “Play Dough Mix” and “Coloured Edible Play Dough Mix” on the box of YUMMY DOUGH.
Hasbro issued proceedings for trade mark infringement and passing off (Hasbro Inc v 123 Nahrmittel GmbH  EWHC 199). Nahrmittel counterclaimed for declarations of invalidity and for revocation of Hasbro’s trade marks. Nahrmittel also argued that they had used the words “play dough” merely to indicate the kind or quality of the goods.
Validity and Revocation
It was not in dispute that the PLAY-DOH marks had strong elements that referred to the kind of goods for which they were registered. Floyd J considered that the phonetic identity of PLAY-DOH with “play dough” was the strongest argument against validity. However, Hasbro’s market share, intensity of use, length of use and amount of promotional investment lead Floyd J to the “inescapable conclusion” that a large proportion of the relevant public would take the PLAY-DOH mark as denoting the Hasbro product. The validity attack therefore failed.
Floyd J dealt with revocation very briefly, noting that the evidence had not established that PLAY-DOH had become the common name in the trade for modelling compounds as a result of acts and/or inactivity on the part of Hasbro.
Floyd J found that PLAY-DOH was not identical to “play dough” or the signs THE EDIBLE PLAY DOUGH!, “Play Dough Mix” and “Coloured Edible Play Dough” as the visual differences would not go unnoticed by the average consumer. Therefore, there was no infringement under Article 5(1)(a) of the Trade Marks Directive (2008/95/EC).
As for Article 5(1)(b), Floyd J noted that the strapline THE EDIBLE PLAY DOUGH! was used on the packaging of the product, visible at the point of sale, and that Nahrmittel had gone to great lengths to weave the phrase to form part of the YUMMY DOUGH mark. The strapline might be understood as having origin connotations itself and was therefore used in the trade mark sense.
In terms of likelihood of confusion, there was a strong conceptual similarity between the mark PLAY-DOH and the sign THE EDIBLE PLAY DOUGH!. Further, there was phonetic identity and visual similarity. In Floyd J’s view, the PLAY-DOH marks had achieved household status and there was “undoubtedly a class of consumers who will see or hear the sign THE EDIBLE PLAY DOUGH! and be misled into thinking it is the product they know under the mark PLAYDOH”. Accordingly, infringement under Article 5(1)(b) was established.
As for Article 5(2), Floyd J said that the PLAY-DOH marks enjoyed the necessary reputation as they were known to a significant part of the public concerned. His findings on likelihood of confusion had already established a link or connection between the marks and the sign in the minds of the relevant public. Accordingly, the requirement of unfair advantage had been satisfied: misrepresenting the origin of goods was to take advantage of the goodwill attached to the marks. Alternatively, by bringing the marks to the mind in a way falling short of actual confusion, Nahrmittel had taken advantage of the goodwill attached to the marks. There was also detriment to the distinctive character of the PLAY-DOH mark as it was Hasbro’s prerogative to decide on the types of goods associated with their goodwill and they had made a conscious decision not to promote the eating of PLAY-DOH.
Article 6 Defence
Floyd J found that Nahrmittel had not acted in accordance with honest commercial practices. Nahrmittel had proceeded on the assumption that the strapline was a descriptive term and that Hasbro would not be able to stop its use. However, Nahrmittel had not considered whether making it part of the brand name would have different implications. They were also aware of the possibility that consumers might think YUMMY DOUGH was a Hasbro product and that Hasbro had objected to the strapline.
Floyd J noted that consumers would be familiar with the various additional features of the Hasbro brand, such as the cloud logo. However, he was not satisfied that these additional features were sufficient to avoid confusion amongst a significant proportion of consumers. Passing off was therefore established.