Straplines - use as a Trade Mark?

This article was included in the spring 2011 issue of snIPpets - the intellectual property newsletter.

The mark PLAY DOH, owned by Hasbro, has been used by children in the UK since 1964 on the colourful, non-edible modelling compound and, to the overwhelming majority of consumers in the UK, needs no introduction. German company, 123 Nahrmittel, used straplines including "the edible play dough" on its product YUMMY DOUGH, an edible and malleable children’s baking dough. Although it was argued that PLAY DOH is descriptive of modelling compound for children, Hasbro has recently successfully brought infringement and passing off proceedings against 123 Nahrmittel in the High Court (Hasbro Inc (and others) v 123 Nahrmittel GmbH [2011] EWHC 199 (Ch)).

As a defence against the infringement proceedings, 123 Nahrmittel claimed the defence under Article 6 Trade Mark Directive 2008/98/EC of honest practice. 123 Nahrmittel also claimed that PLAY DOH was descriptive, should be allowed free use and counterclaimed for revocation and invalidity of the mark. Floyd J dismissed the defence and invalidity and revocation counterclaims and held there was infringement under Articles 5(1)(b) (similar sign used on identical goods where there is a likelihood of confusion) and 5(2) (unfair advantage of, or detriment to, a well known mark) and passing off.

The case serves as a warning to over-enthusiastic manufacturers, seeking to use straplines which incorporate third party trade marks. However, there are a number of distinguishing features in the present case, not least being that 123 Nahrmittel had sought Hasbro’s consent to use the mark YUMMY DOUGH in 2007 and the parties had discussed possible collaboration on a joint product. Hasbro decided not to proceed further with the negotiations and warned 123 Nahrmittel against infringement of PLAY DOH. There is no doubt that 123 Nahrmittel was fully aware of Hasbro's rights; its German attorney even gave assurances that his client would use either "edible dough" or "baking dough" on its UK packaging. Interestingly and crucially, 123 Nahrmittel did not seek the advice of an English lawyer - 123 Nahrmittel’s managing director wanted to use "the edible play dough" and simply pushed ahead, deciding, in his enthusiasm for YUMMY DOUGH, that PLAY DOH was descriptive. In his view, "play dough" should be free for use by all manufacturers and therefore could be used not only as a strapline "the edible play dough" on YUMMY DOUGH packaging and its website but also as descriptors on the packaging - "play dough mix" and "coloured edible play dough."

On the facts, PLAY DOH is an inherently descriptive mark and it is easy to see why 123 Nahrmittel drew the conclusions it did. However, it was battling against a mark with an enormous level of use, enjoying revenue in the UK and Eire alone of £4.3 million in 2009. The use was such that the court acknowledged it was "beyond dispute that PLAY DOH is a very well-known brand" and the evidence provided of its use was "at the extreme end of that which any trade mark proprietor might ever hope to prove." Further, Hasbro also evidenced it had protected its mark - its competitors avoided using any similar mark, even as descriptor, including "play dough." Unsurprisingly, 123 Nahrmittel was not able to demonstrate that play dough was a common name in the trade and therefore the defence of honest practice failed.

Are straplines use as trade marks? In this case, the answer is a resounding yes but 123 Nahrmittel was at fault in not:

• appointing UK counsel at the outset and choosing to ignore Hasbro’s rights and warnings.
• undertaking proper market research at the outset of competitors’ packaging.

And by

• Interweaving the strapline with other "play dough" descriptors on its packaging and website.
• Using "the" as a prefix to the strapline, heightening the likelihood of oral confusion with PLAY DOH.