US toy titan, Hasbro has successfully sued German company, 123 Nahrmittel (“Nahrmittel”) and its UK distributor for trade mark infringement and passing off in respect of their use of the tag line “The edible play dough!” (“Tag line”) to describe their product “Yummy Dough.”
“Yummy Dough,” is a powdered dough mix, which can not only be played with, but also consumed, in baked or raw form. In addition to the Tag line, the words “play dough mix” and “coloured edible play dough mix,” also appear on the packaging of the Nahrmittel product.
Known as “Essknete” in Germany (roughly translated as edible modelling dough), “Yummy Dough” is marketed as “the recipe against boredom.” The product was the invention of Nahrmittel CEO’s two young daughters.
Key issues in the case were whether Nahrmittel’s use of the Tag line infringed Hasbro’s registered trade mark “Play-Doh” and, owing to its allegedly descriptive flavour, whether the registration of the mark, “Play-Doh” was invalid and should be revoked.
Notwithstanding a raft of evidence that the phrase “play dough” is used in a number of contexts, by the public, as a means of describing malleable modelling dough for use by children in playtime activities (this evidence comprising over 10 pages of the judgment), Justice Floyd nevertheless found that Hasbro’s mark was validly registered and should not be revoked for the reason that it was “devoid of any distinctive character.”
Key factors which weighed in favour of such a conclusion were Hasbro’s “market share,” the “extent and length of use” of the mark and the “amount of investment in the promotion of “Play-Doh.” It was held by Justice Floyd that these factors tipped the scale in favour of a finding that the mark was validly registered, and prevailed over the “inherent inability of the mark to distinguish.”
In relation to the issue of infringement, Justice Floyd concluded that there was ‘no doubt’ a strong conceptual similarity between Hasbro’s mark and Nahrmittel’s Tag line and pointed to the visual resemblance and identical phonetic nature of “Play-Doh” and “play dough.”
Justice Floyd also took the view that the likelihood of confusion was enhanced or encouraged by the manner in which Nahrmittel’s sign was presented. Whilst the defendant company explained the use of the definite article in its Tag line, as denoting Yummy Dough to be the only edible play dough in the market, Justice Floyd was not convinced. Instead it was held that consumers might be just as likely to form the incorrect view that “Yummy Dough” was the edible version of Play-Doh.
Justice Floyd held that it was as if Nahrmittel were claiming their product was “the ‘Play-Doh’ of children’s baking mixes” and as such, the company was unfairly taking advantage of Hasbro’s mark.
Finally, Justice Floyd concluded that Nahrmittel’s conduct in marketing ‘Yummy Dough’ was not in accordance with honest practices. In forming this view, Justice Floyd noted a number of factors, including:
- Nahrmittel’s awareness that ‘Play-Doh’ was a registered mark;
- knowledge on the part of Nahrmittel’s CEO that the use of the Tag line might lead some consumers to believe Yummy Dough was a Hasbro product; and
- knowledge of advice that the Nahrmittel Tag line was too close to Hasbro’s mark.