The High Court considered that the strap-line "The edible play dough" was a brand name extension, use of which was therefore in a trademark sense and not merely descriptive. Further, acquired distinctiveness in "PLAY-DOH" overrode its inherent descriptiveness in relation to moldable dough products.

123 Nahrmittel GmbH, a manufacturer of a powdered edible dough mix for children, launched its "Yummy Dough" product in the United States in 2009 with the accompanying strap-line "The edible clay" on the front of the box. The later UK launch saw the strap-line altered to "The edible play dough." Hasbro, Inc., a manufacturer of children's modeling dough products, held a number of UK and Community trademark registrations for "PLAY-DOH" in relation to the same type of goods.

Please click here to view Yummy Dough packaging and Play-Doh logo

Hasbro brought an action for trademark infringement and passing off against 123 Nahrmittel and its UK distributor. 123 Nahrmittel counterclaimed for a declaration of invalidity and revocation in respect of Hasbro's "PLAY-DOH" marks.

Internet evidence showed generic everyday use of the words "play dough" for over forty years in relation to home-baking recipes and dictionary descriptions. However, the court accepted counsel for Hasbro's argument that "the internet as a tool has the power to suck in vast amounts of information and give the impression that a few isolated examples are more substantial than they in fact are." This was compounded by the fact that direct competitors of Hasbro were not in the habit of using the words "play dough" as a brand name for dough-based products, although some used the words in descriptive material on websites or other forms of product advertising. Conversely, 123 Nahrmittel was, by its own admission, using a strap-line incorporating "play dough" as a brand name extension, supported by its important role in the naming, branding and marketing strategy.

The court said that "PLAY-DOH" was inherently of low distinctive character; however, it had acquired distinctiveness through extensive use and so was not invalid. Nor was it considered to have become the common name in the trade to describe dough that could be played with, and so was not vulnerable to revocation.

On infringement, contrary to 123 Nahrmittel's submission, the court held that "The edible play dough" did not merely serve to indicate the characteristics of the product but had been woven into the product name and would be understood as such. In addition, the court considered that a significant proportion of consumers would, allowing for imperfect recollection of the spelling and taking into account Hasbro's extensive and lengthy period of use of the brand name "PLAY-DOH," misconstrue 123 Nahrmittel's product as an edible version of Hasbro's product.

Accordingly, the strap-line was used in a trademark sense, and likelihood of confusion was found even in the absence of actual confusion. Hasbro's claim therefore succeeded in relation to Article 5(1)(b) of Directive 2008/95/EC.

On Article 5(2) infringement, "PLAY-DOH" easily held the requisite reputation, and the existence of origin confusion both met and surpassed the requirement that a link be established with Hasbro's mark, and formed the basis of the misrepresentation giving rise to unfair advantage. Detriment was also affirmed as Hasbro had purposefully chosen not to produce edible versions of its children's products.

Use of the strap-line was not in accordance with honest practices, as inter alia 123 Nahrmittel had been aware of Hasbro's registered marks, and there was evidence that it knew use of the strap-line might be misleading and that Hasbro objected to its use. There was sufficient scope for variation in describing moldable dough products for children that the confusion caused by use of "play dough" was not otherwise excusable.

Permission to appeal has been granted. Pending the outcome of any such appeal, this decision is likely to serve as a useful precedent for proprietors of inherently descriptive trademarks of which ostensibly descriptive use has been taken.