Hasbro Inc & Ors v 123 Nahrmittel GmbH & Anor

A registered mark with descriptive elements may acquire distinctive character through extensive and intensive use. Validity is assessed by an overall appraisal of the mark as registered and its use in context; phonetic similarity alone does not determine either validity or infringement.

For likelihood of confusion, the court must assess the actual use of the sign globally, through the eyes of the average consumer, considering visual, aural and conceptual similarity, the distinctive character of the earlier mark, and the similarity of the goods. A descriptive indication may nevertheless be used in a trade mark sense where it forms part of product naming and has origin connotations. Article 6 does not protect use which gives rise to confusion or takes unfair advantage of the proprietor’s reputation where alternative wording was available.

Hasbro owned UK and Community trade marks for PLAY-DOH, used for children’s modelling composition. The defendants marketed an edible dough product under YUMMY DOUGH, prominently using the strap line “The edible play dough!” and less prominent phrases including “PLAY DOUGH MIX”.

Hasbro claimed infringement under Articles 5(1)(a), 5(1)(b) and 5(2) of the Trade Marks Directive and passing off. The defendants counterclaimed for invalidity and revocation and relied on the Article 6 defence for descriptive use. The central issues were whether the marks were valid, whether the signs were used in a trade mark sense and caused confusion or took unfair advantage, and whether the defendants’ use was honest.

1. Validity. The PLAY-DOH marks had low inherent distinctiveness because PLAY referred to use of the goods and DOH was phonetically equivalent to “dough”. Nevertheless, the overall assessment required by the Directive included market share, intensity, duration and geographical extent of use, promotional expenditure and recognition by the relevant public. Those factors established acquired distinctiveness. The validity counterclaim therefore failed.
2. Revocation. The evidence did not establish that PLAY-DOH had become the common name in the trade through acts or inactivity of Hasbro. The revocation counterclaim was dismissed.
3. Identity. “PLAY DOUGH” was not identical to PLAY-DOH under Article 5(1)(a). The visual differences, including the spelling, would not go unnoticed by the average consumer. The longer signs also had to be considered as a whole.
4. Likelihood of confusion. The strap line was used on packaging at the point of sale and was woven into the product name and website presentation as a brand-name extension. It therefore had origin connotations and was used in a trade mark sense. The signs had strong conceptual and aural similarity to PLAY-DOH, and the mark had acquired the status of a household name. A significant class of consumers would believe that the goods came from the same or economically linked undertakings. Article 5(1)(b) infringement was established.
5. Reputation. PLAY-DOH was known to a significant part of the relevant public. The defendants’ use created a link with the mark and took unfair advantage of its goodwill. It also caused detriment by associating Hasbro’s goodwill with an edible product. Article 5(2) infringement was established.
6. The less prominent expressions “COLOURFUL EDIBLE PLAY DOUGH MIX” and “PLAY DOUGH MIX” were objectionable in their packaging context for similar reasons. The court declined to determine their position in the absence of the strap line because that would have involved a hypothetical question.
7. Article 6. Although the defendants had a genuine need to describe the product as edible and playable, that did not explain their choice to use “play dough” as a brand-name extension. They knew of Hasbro’s rights and objections, had been warned of the risk of confusion, and had alternative descriptions available. Their use was not in accordance with honest practices.
8. The passing-off claim also succeeded. Hasbro had goodwill, the defendants’ use was liable to misrepresent origin, and damage followed. The action succeeded for trade mark infringement and passing off; the counterclaims for invalidity and revocation were dismissed.