Enforcing trade marks that may have descriptive connotations is not without difficulty, yet they are often the 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 comfortably secure 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 to the Register does not restrict the scope of protection when one comes to infringement, particularly as a mark may grow in strength by reason of acquired distinctiveness".

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

The defendants denied infringement and challenged the validity of the PLAY-DOH word marks, claiming that if they covered use of "Play Dough" then they were devoid of distinctive character. They also argued that they should be revoked because the word marks had become the common name in the toy trade for soft modelling 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 mark

The judge concluded that the defendants' conditional or "squeeze" approach to the challenge to the validity of the PLAY-DOH was not legitimate. The consideration of the inherent distinctiveness of a mark must focus on the mark as registered and includes a consideration of its visual impact. In addition, a mark may have acquired, or may following registration acquire, distinctive character through use. The scope of protection 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-DOH brand, Floyd J concluded that the PLAY-DOH word marks had obtained a very high degree of distinctive character through use by Hasbro and its predecessors. This was despite it having a relatively low degree of inherent distinctiveness when it was first coined in the 1950s due to it incorporating "elements which refer to 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 market share, intensity of use, length of use, amount of investment in promotion are all shown in the present case to 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 was right "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 of distinctive character were therefore dismissed, as was the claim for revocation on the basis that PLAY-DOH had become generic: "The evidence did not establish that PLAY-DOH had become the common name in the trade, far less that it had become so through any inactivity on the part of Hasbro".

Infringement

The judge found that, although not identical, the defendants' relevant signs including "The Edible Play Dough" 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 likelihood of confusion as "a significant class of consumers [will be caused] to assume that goods bearing the [The Edible Play Dough] strap line and goods to which the mark is applied come from the same or linked undertakings". 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 a reputation and "the use of signs by the defendant is certainly sufficient to bring the marks to mind in a significant class of consumers, even if the effect of the signs is not sufficient for them to assume that there is common origin".

The judge also held that Hasbro had suffered detriment to, and the defendants' had been taking unfair advantage 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. The defendants, 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 a communication with the First Defendant, Mr Polko (an investor in the First Defendant) had agreed with the First Defendant's suggestion of using The Edible Play Dough on the Yummy Dough product but warned that such use would "touch on Hasbro's high profile". The judge concluded that "Mr Polko got it right" noting, it is "as if they are saying this is the 'Play-Doh' of children's baking mixes".

The descriptive use defence

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

He acknowledged that this term was included as an adjective in the Oxford English Dictionary and there was evidence 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". There was evidence that a proportion of consumers were not aware of such "homely" uses, and bearing in mind imperfect recollection, to them "'play dough' only refers to a commercial product". There was little evidence of use in commerce by other traders of Play Dough. The context of use was very important because:

"It is wrong to consider the meaning of the words when used in other contexts, such as, in the present case, in recipes for homemade play dough or craft literature. Moreover, here as elsewhere dictionaries are a dangerous guide if used in isolation. The question in every case is not the definition of words, but what the average consumer would understand, if he or she saw 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 v Cipriani (Grosvenor Street) Limited case.

Key to his determination were his findings that the defendants were not only aware of Hasbro's mark all along, 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 gone ahead, 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 earlier by the judge, the defendants had "gone to lengths to weave the phrase 'the edible play dough' into the naming of their product as 'YUMMY DOUGH – the edible play dough' not only on the packet but also on the website".

In these circumstances the defendants had not complied with their "duty to act fairly" in relation to Hasbro'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 judgments where a likelihood of confusion by the average consumer is established without the benefit of any evidence of "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 due to 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 common sense inferences from the relevant factors. This is an encouraging sign in view of the obvious practical difficulties in providing concrete evidence demonstrating that consumers were more attracted to the defendants' goods or less attracted to the claimant's goods as a result of the defendants use of its similar sign. Some commentators had suggested that such concrete evidence was required to establish infringement under article 5.2.