Hasbro Inc., Hasbro SA and Hasbro UK Ltd v 123 Nahrmittel GmBH and Marketing & Promotional Services Ltd
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE FLOYD,Mr Justice Floyd |
| Judgment Date | 11 February 2011 |
| Neutral Citation | [2011] EWHC 199 (Ch) |
| Docket Number | Claim No. HC10 C001001 |
| Court | Chancery Division |
| Date | 11 February 2011 |
[2011] EWHC 199 (Ch)
Before :The Hon Mr Justice Floyd
Claim No. HC10 C001001
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
COMMUNITY TRADE MARK COURT
Geoffrey Hobbs QC and Douglas Campbell (instructed by Wragge & Co. LLP) for the Claimants
John Baldwin QC and Henry Ward (instructed by Pinsent Masons LLP) for the Defendants
Hearing dates: 30 th November, 1 st-3 rd, 6 th-7 th, 9 th-10 th December 2010
Approved Judgment
(Graphic material removed)
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Justice Floyd:
Introduction
This is an action for infringement of trade marks and passing off. The principal allegation is that by use of various words and phrases including the words "play dough" the defendants have infringed the claimants' PLAY-DOH trade marks and passed off their goods as the claimants' goods.
The claimants, Hasbro (there is no need for most purposes to distinguish between the three companies), make and sell a children's modelling composition under the trade mark PLAY-DOH. The first claimant is the registered proprietor of three trade marks for the word PLAY-DOH as follows:
(a) Community Trade Mark No 000238634, filed 24th April 1996, registered in:
(i) Class 16 in respect of all the goods in the class heading of that Class and, in addition, "modelling compounds" 1 and parts and fittings for all the aforesaid goods;
(ii) Class 25 in respect of all the goods in the class heading for that Class 2 and parts and fittings for all the aforesaid goods; and
(iii) Class 28 in respect of all the goods in the class heading for that class 3 and "toys" and parts and fittings for all the aforesaid goods
(b) UK Trade Mark 960 810, filed 20th June 1970, registered in Class 16 in respect of "modelling compositions".
(c) UK Trade Mark 1344740, filed 18th May 1988, registered in Class 16 in respect of "modelling compositions included in Class 16".
The claimants' PLAY-DOH product is sold as a pre-mixed modelling composition. Its exact ingredients are said to be confidential, but they are certainly not the traditional ingredients of baking dough, or of a home made dough intended for children to play with (as to which see below). Although children are encouraged to make food-like products from PLAY-DOH (spaghetti and burgers amongst many other things), it is not intended to be eaten. It contains components which make it taste bad.
Over the years PLAY-DOH has been sold in small yellow tubs either singly or in packs of four, or as part of a kit. Their trade dress is a predominantly bright yellow pack. Their PLAY-DOH logo has white lettering against a red background in a child-like "extruded" font against a cartoon-style cloud like this: [image removed]
The first defendant manufactures abroad and sells in the United Kingdom (through the second defendant as its distributor) a powdered dough mix under the name "YUMMY DOUGH". It is an important selling feature of YUMMY DOUGH that, unlike PLAY-DOH, it is intended not only to be played with but also to be eaten, either raw or when baked. Unlike PLAY-DOH, YUMMY DOUGH is a dough in the true baking sense.
Hasbro do not object to the sign YUMMY DOUGH being used for the defendants' products. The principal feature of the defendants' marketing which gives rise to the present action is that the product is promoted as "The edible play dough!" A packet of YUMMY DOUGH looks like this: [image removed]
Inside the box are four sachets of powder which, when mixed with water, each produce a different colour of dough: red, yellow, green and blue. As can be seen in the illustration, the words "The edible play dough!" are printed in a single but irregular line across the bottom of the packet. In this judgment I refer to this phrase on the packet as "the strap line".
In addition to the strap line, in smaller type in the top left hand corner, the words "PLAY DOUGH MIX" appear. On the side of the packet, above the nutritional information, the words "COLOURED EDIBLE PLAY DOUGH MIX" appear, also in small type compared to the strap line. These additional and less conspicuous uses of "play dough" on the packet are also the subject of Hasbro's complaint.
Procedural history and present issues
These proceedings were commenced by a claim form issued on 24 th March 2010. An application was made for an interim injunction, which resulted in a consent order in which each of the defendants gave temporary undertakings as follows:
"… not to undertake any material re-brand prior to judgment or further order in this action (and for the avoidance of doubt, "material re-brand" shall include elevating the prominence relative to the existing packaging attached at Annex A and any advertising and/or marketing material relating thereto, of any of the phrases "THE EDIBLE PLAY DOUGH", "EDIBLE PLAY DOUGH" or "PLAY DOUGH" or any colourable variation thereof, on any packaging or in any advertising and/or marketing material)."
Those undertakings were very wide. Elevating the prominence of the disputed phrases is only one example of a "material re-brand" – demoting it would count as well. If those undertakings were made permanent, the effect would be to freeze the defendants' marketing of YUMMY DOUGH within very tight constraints in perpetuity. Not surprisingly, when the defendants were asked whether they were prepared to make those undertakings permanent, they declined. However they have throughout insisted on their right to use THE EDIBLE PLAY DOUGH in the manner in which they have used it, and, as will be seen, at one stage at least indicated an intention to elevate its importance in their branding and marketing so that it was used in place of the existing name YUMMY DOUGH.
There are four separate heads of claim now before the court:
i) the claimants allege infringement of each of their two United Kingdom registered trade marks under each of the provisions in Article 5 of the Trade Marks Directive 4, namely Articles 5(1)(a), 5(1)(b), and 5(2), and of their Community trade mark under the corresponding provisions of the Community Trade Mark Regulation 5, namely Articles 9(1)(a), 9(1)(b) and 9(1)(c). As nobody suggested that the Directive and the Regulation produce a different result, or that I should look instead at the provisions of our domestic statute, I will hereafter refer only to the provisions of the Directive. I attach to this judgment a Concordance of the relevant provisions of the Directive, Regulation and our local Act;
ii) the claimants also sue in passing off based on the goodwill which they claim to have acquired through use of the PLAY-DOH mark in the United Kingdom;
iii) the defendants counterclaim for a declaration to the effect that the claimants' registered trade marks were and remain invalidly registered because they lack distinctiveness or are descriptive;
iv) the defendants counterclaim for revocation of the claimants' registered trade marks on the ground that PLAY DOUGH is the common name in trade for modelling compounds in consequence of acts and/or inactivity on the part of the proprietor.
In addition to their counterclaim for invalidity and revocation, the defendants rely on the special defence afforded by Article 6 of the Directive, as they contend that the use of the signs complained of is an indication of the kind of goods which they sell, and that the use is in accordance with honest practices in industrial commercial matters.
The relevant legislative provisions in the Directive are the following:
Article 3
Grounds for refusal or invalidity
1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
Article 5
Rights conferred by a trade mark
1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.
2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the...
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