Hasbro Inc & Ors v 123 Nahrmittel GmbH & Anor

Dr Niebel was a German lawyer who works for Baker & McKenzie who represent Hasbro in Germany. As one would expect, he gave his oral evidence fairly.

Mr Glover was an expert translator from the German language. No permission was given to call expert evidence of this kind. He was not called as a witness and Mr Baldwin QC who appeared on behalf of the defendants with Mr Henry Ward objected to the evidence being admitted under the Civil Evidence Act 1995. At the time of the trial he was in Brazil. The evidence arises in answer to a suggestion by Mr Kaczmarek said that Essknete could be translated as “play dough”. In the end I do not think his evidence has much bearing on the issues I have to decide. I have allowed it in for what it is worth to meet the translation point made by Mr Kaczmarek.

Hasbro called a number of trade witnesses. Mr Baulch is the publisher of “Toys ‘n’ Playthings” magazine, a trade publication for the toy industry. He has carried advertising for the defendants’ product, and was aware of the use of “the edible play dough”. He would not use the term “play dough” in his magazine to designate the generic class of modelling compounds. His evidence was that, in the toy trade, the words “play” and “dough” together signified the Hasbro product. He was not aware of anyone in the mainstream toy trade that used “play dough” in its packaging or marketing. He was unfamiliar with any usage of “play dough” to mean home-made dough for playing with. He made it clear that he was giving evidence about trade usage alone.

Mr Raghvani was an independent toy retailer with a toy shop in South Harrow and an on-line shop. The only dough he regularly stocked was PLAY-DOH, although he occasionally stocked Moon Dough, of which he was not a great fan. He told me that customers who came into his shop and asked for play dough wanted PLAY-DOH, but his cross-examination revealed that he did not really know why this was so. He was not familiar with the fact that you could get recipes for play dough on the internet, or make it for yourself much more cheaply than the branded commercial product.

Ms Marshall was a toy buyer for Tesco until March 2010. The relevant category of product on the Tesco website was “moulding compounds”, which included Moon Sand, Go Create Dough and PLAY-DOH. In Tesco stores all these products would be logged under “branded crafts”. As a buyer, she would call the sub-class “children’s compounds”, but they could be called “doughs” or “clays”. She would not call them “play doughs”, and had not heard any customers do so. Until she had seen Yummy Dough she was not aware of other products using the words “play dough” on packaging or promotional materials. Tesco’s own-brand dough was sold in a handy bright yellow box with a blue label into which all the dough could be replaced after playing.

Ms Marshall remembers seeing the Yummy Dough product promoted in an email with an image of the product. Tesco decided not to stock it on shelf space grounds.

Ms Pearce was a Senior Buyer for Arts, Crafts, Toys, Games and Jigsaws for WH Smith. WH Smith stock PLAY-DOH as well as what she described as “competitive doughs”. Plasticine was in her view really a clay rather than a dough. WH Smith also stock their “own brand dough”. She explained that although they called it a dough, they did not use the word “play” on it anywhere for fear of offending Hasbro, although putting “play” on a dough product was a reasonable thing to want to do. She was not aware of any dough other than YUMMY-DOUGH which used “play dough” on its packaging. In the trade “Play-Doh/Dough” meant the Hasbro product. If a customer were to ask her about “Play-Doh/Dough” she would “assume” the customer meant PLAY-DOH. WH Smith decided not to stock YUMMY DOUGH because it would not fit well with their existing lines.

Ms Pearce also said that she thought that Yummy Dough looked like a “cheap copycat product”. She was the only witness to venture such a conclusion. This was not her initial impression, indeed WH Smith had requested a sample when approached by the second defendant. For my part, I think it is difficult to see how a powdered dough mix could be described as a copy of a pre-mixed dough. Ms Pearce did not explain why she thought it was a copycat product, except that she did not like the packaging. She certainly did not identify the words “The edible play dough” as the source of her opinion. I did not find this part of her evidence at all convincing.

Ms Roblin was a toy buyer from Fenwicks store in Canterbury. Her store stocks PLAY-DOH, as well as “Plasticine modelling clay” and the Disney product. They categorise these as “pre-school” products. She considers “play dough”, however it is spelt, to be Hasbro’s product. She remembers seeing YUMMY DOUGH at the Birmingham Spring Fair. She did not bother to stop at the stall because she did not like the idea of a “children’s modelling dough product you are supposed to eat”. She was not familiar with the idea that you could make play dough at home, had never done so and none of her friends did either. Ms Roblin was shown the packaging of YUMMY DOUGH by Hasbro’s solicitors in circumstances where she must have realised that they were acting for Hasbro. She says that, although she would not be confused, it made her think of the Hasbro product.

The last trade witness was Mr Campbell who was Entertainments Manager of Hamleys, the well-known toy shop in Regent Street. He was not called as a witness due to poor health of members of his family for who he was caring, but his statement was admitted as hearsay. His evidence did not add much to the body of trade evidence which Hasbro had called.

Mr Stefan Kaczmarek is the CEO of the first defendant, 123 Nährmittel. He is undoubtedly no ordinary businessman. YUMMY DOUGH was a very important project to him. He was very excited by it and emotionally attached to it. As far as his evidence is concerned, I have made allowances for the fact that he was giving evidence in a foreign language, albeit aided by an interpreter. Nevertheless I felt that his evidence was not always entirely reliable. I think he allowed his answers, in some cases, to be influenced by his passion for the product. As a result he tended not to answer the question he was asked, and did not always give fair answers.

Mr Sharman was the Head of Sales at the second defendant. He gave his evidence in a fair and down to earth manner, although I was not impressed with his evidence of his awareness of products being sold as “play dough” which, surprisingly for someone in the second defendant’s position, lacked any real specificity.

Mr Feuersenger is CEO of aeris Capital AG, one of the backers of the defendant. He was a fluent English speaker and was a frank and honest witness.

Both sides chose to call an expert witness. Mr Grant was Hasbro’s witness and Mr Jones was called by the defendants.

The principal question which I have to decide is the impact of the words in question on an average consumer. These are not specialist goods. As Millett LJ said in The European Ltd. v The Economist Newspaper Ltd [1998] FSR 238 (CA) at 291:

“The function of an expert witness is to instruct the judge of those matters which he would not otherwise know but which it is material for him to know in order to give an informed decision on the question which he is called on to determine. It is legitimate to call evidence from persons skilled in a particular market to explain any special features of that market of which the judge may otherwise be ignorant and which may be relevant to the likelihood of confusion. It is not legitimate to call such witnesses merely in order to give their opinions whether the two signs are confusingly similar. They are experts in the market, not on confusing similarity.”

Likewise in GE Trade Mark [1973] RPC 297 at 321, Lord Diplock said

"My Lords, where goods are of a kind which are not normally sold to the general public for consumption or domestic use but are sold in a specialised market consisting of persons engaged in a particular trade, evidence of persons accustomed to dealing in that market as to the likelihood of deception or confusion is essential. A judge, though he must use his common sense in assessing the credibility and probative value of that evidence is not entitled to supplement any deficiency in evidence of this kind by giving effect to his own subjective view as to whether or not he himself would be likely to be deceived or confused… But where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a "jury question". By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced, but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused.

The question does not cease to be a "jury question" when the issue is tried by a judge alone or on appeal by a plurality of judges. The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself."

Those observations were recently re-emphasised in esure Insurance Limited v Direct Line Insurance plc [2008] EWCA Civ 842, per Arden LJ at [54] – [57] and [62] and per Jacob LJ at [72] to [77] and per Maurice Kay LJ at [80] to [82].

Mr Hobbs QC, who appeared on behalf of Hasbro with Mr Douglas Campbell, submitted that these authorities do not go as far as to say that expert evidence is not admissible on the subject of whether the use of a sign takes unfair advantage of or is detrimental to the distinctive character or repute of a trade mark. That is true. But insofar as those issues demand a consideration of what a customer will think when he or she sees a particular word or sign, it seems to me that similar considerations apply. This is readily visible from Mr Grant’s conclusion which he expresses in this way:

“The combination of the factors I mention in this report including

(a)

the strength and power of the PLAY-DOH brand

(b)

the fact that customers, and advertisements all mention “Play-Doh” when they mean Hasbro’s product and you do not know how they are spelling what they are saying,

(c)

the fact that the Defendants’ product is positioned in the modelling compounds market, against Play-Doh;

(d)

the adoption of a colour-way similar to Play-Doh’s colour-way,

(e)

the fact that even when you can see the spelling, experienced trade buyers buying Play-Doh product from Hasbro still sometimes spell it “Play Dough”,

(f)

the fact (as I explain below) that the modelling compound market is fiercely competitive but the other brands all try to remain distinct from each other and do not use the phrase “play dough”, and

(g)

the Defendants’ adoption, in these circumstances, of the phrase “Yummy Dough – The Edible Play Dough!”,

all combine to mean that I believe customers will naturally expect “The Edible Play Dough” to be Play-Doh, in a form which can be eaten. This in turn means that Yummy Dough is likely to gain acceptance in the market because it will be able to draw upon the goodwill, trust and affection consumers already have for the PLAY-DOH brand.”

These are all points on which a judge is able to form his or her own view, both as to whether they are established and whether they have relevance. For these reasons I did not think that this was a case in which either side needed to call any expert evidence.

Mr Grant and his family own the chain of UK toy shops, The Entertainer and the accompanying online shop, TheToyShop.com. The Entertainer is the largest independent retailer of toys in the UK.

Quite apart from the fact that much of his evidence was superfluous, I did not find Mr Grant to be a very helpful witness. He had a tendency not to answer the question he was asked, and to make unsupported statements. More than this, I did not think he was being entirely straightforward when he said he was unable to find a descriptive word which the public would use to cover the category of soft modelling doughs for children to play with. To him there were two categories of modelling compounds for children so far as the trade was concerned: “soft doughs” and “clays”. His cross examination about the category name went as follows:

Q. You told us that the trade call them modelling compounds. As a category, what is your evidence as to how the customer -- what words would the customer use for that category?

A. If they were looking for a name to describe the whole category, I would think they would use the word "craft", "craft materials".

Q. Just imagine we are including the doughs.

A. I think they would see it as craft activities.

MR. JUSTICE FLOYD: Is that not a bit broad, though?

A. For narrowing it down.

MR. BALDWIN: Just the doughs as a category.

A. The customers tend to know what they are asking for. Mums in particular know products. Gifters are just looking around the store and they will just choose something or people have been given, at this time of year in particular, a shopping list to go out and buy particular things. So people would generally come in and ask for things by name. The branded products are generally the things that are asked for by name.

MR. JUSTICE FLOYD: Is it simply the case that you cannot think of a name for this category?

A. So somebody coming in and asking for a category name that would guide them to play dough or to guide them to modelling material ----

Q. To guide them to Moon Dough or any of these products that we have been discussing.

A. I do not think the customer has a generic name for that type of product, no.

The transcript does not give the real flavour of these exchanges. The answers were preceded by very long pauses in which Mr Grant was considering his response. I think Mr Grant was reluctant to concede that “doughs” was a suitable word to describe the range of products because he thought it would harm Hasbro’s case.

Mr Jones has worked for over 20 years in advertising and marketing in the toy industry. Mr Hobbs criticised Mr Jones’ evidence on three grounds. Firstly he said that Mr Jones had expressed views on the case without considering the witness statements of the claimants’ trade witnesses. Secondly he said that the investigations which he had carried out to test Hasbro’s position that PLAY DOUGH and PLAY-DOH were interchangeable in commerce were inadequate. Thirdly he was criticised for exhibiting the results of searches on the internet which had been carried out by or with the assistance of the defendants’ solicitors. I think there is something in the first two of these criticisms, but not the third. But, as I have said, I am not at all persuaded that the main disputes which I have to resolve, and particularly that relating to infringement, will be much assisted by the evidence of experts of this kind.

PLAY-DOH was developed by a company called Rainbow Crafts of Cincinatti, a manufacturer of soap and cleaning compounds, in around 1955. It was initially used in schools and kindergartens. In 1956 PLAY-DOH was demonstrated and sold in the toy department of the Woodward & Lethrop store in Washington, D.C. Commercial success followed. The international launch, in a number of European countries including the UK, occurred in 1964. By 1971 Rainbow Crafts was owned by General Mills, and merged with Kenner Products. By 1972, 500 million tubs of PLAY-DOH had been sold worldwide. In 1991 the PLAY-DOH business was purchased by Hasbro as part of its acquisition of the business of the Tonka group of companies, which then owned Kenner.

The name PLAY-DOH appears to have been coined by its original inventors. However there is clear evidence that the words “play dough” had been in use for modelling compounds at an earlier date in the United States, both in the home and in commerce. Mr Feuersenger located a reference in a United States Children’s Bureau publication dated 1912. This said “home-made play dough is similar to clay”. A second publication “Education in the Kindergarten” by Foster and Headley, published in 1936 has a passage which differentiates commercial and home made play dough which reads:

“PLAY DOUGH: “Play dough is a modelling material which is excellent for those who are in the manipulative or symbolic stage of modelling. It is pliable, colourful, non-toxic and reasonably long-lasting. The play dough on the market retains its pliability over a long period of time. Home-made play dough is not so long lasting as the commercial product…”

Another quotation from a later version of this publication is to be found as an example of more modern usage in the Oxford English Dictionary (which I mention below).

The branding which I have identified above has been used since 1955/1956, although details such as the precise shades of colour and the font used for the name have changed.

Global revenue in PLAY-DOH in 2009 was over $US 150 million. Net revenue in the UK and Eire for 2009 was £4.3 million, representing 2.3 million units.

Hasbro spend significantly on television advertising of PLAY-DOH sets, expenditure in the UK and Eire (mainly for television advertising) being in the region of £300,000 for each of the years 2005-2009. In addition there is exposure of the product on the internet, via well-watched advertisements posted on YouTube.

It is accordingly beyond dispute that PLAY-DOH is a very well known brand. Mr Kaczmarek himself acknowledged this as did numerous other witnesses. Mr Kaczmarek had known PLAY-DOH since he was a young boy. He made a distinction, however, between the visual branding of PLAY-DOH (with the cloud logo and other features) and the word PLAY-DOH alone. Mr Sharman stated that PLAY-DOH was “a famous and well accepted brand and product” of which he and his colleague Dirk Kiefer were “obviously aware”. Mr Feuersenger said PLAY-DOH was a well known and strong brand and that he knew the market for it was very large indeed.

Mr Jones, the defendants’ expert witness, spoke of PLAY-DOH being a “hero-brand”. He meant by this that it was the “instantly recognisable part of whatever the product or brand might be that you are looking at at that given time” He was cross-examined as follows:

“Q. I am right in understanding, am I not, that a word like Lego or Barbie or the Simpsons -- A word can be the hero for that purpose. There is no doubt about that, is there?

A. Well, Lego is a word.

Q. Exactly. That is the point I am making to you. The point I am getting at is whether or not the word Lego or Barbie or the Simpsons is also presented with some other form of visual embroidery to go with it. The word can be the hero as a result of its verbal impact. That is correct, is it not?

A. Yes.

Q. The point I really want to put to you, as I think you may just have anticipated, and I can see you nodding, is that you do say later in your report that Play-Doh is a hero. I am putting it to you very simply that it is a hero in the verbal sense, namely it is a hero word mark. That is correct, is it not?

A. Hero word mark? You say Play-Doh. It is the brand leader. I think somebody said 95% in terms of research, in terms of known amongst mums, so therefore it is a word that would be instantly recognisable to a lot of mums.

Q. Absolutely. In fact, you have never had any doubts on that proposition at all. It has always been your view that in your own nomenclature, it is a hero word brand. That is correct?

A. It is a hero brand, yes - Doh is, yes.”

Mr Baldwin sought to undermine those answers on the basis that the brand recognition figure that had been mentioned in court was based on showing the full red, white and yellow logo to interviewees. They were not shown the word in plain script. But Mr Jones’ answers were not given solely on the strength of the figure that had been mentioned in court. I have no doubt that Mr Jones was right to concede that PLAY-DOH “is a word that would be instantly recognizable to a lot of mums”.

It is fair to bear in mind, however, that the reputation in the word PLAY-DOH does not exist in a vacuum. As Mr Popper pointed out, as a result of the use and promotional activity, “People know that Play-Doh branded modelling compound comes in the yellow tubs and has the red cloud and white lettering on it as we have kept this aspect of the brand consistent over such a long time period.”

Mr Grant said that “The features of “Play-Doh” that are most significant to my customers are the name itself, “Play-Doh”, the Play-Doh logo … the distinctive yellow and red colourway on the tubs with the colour-coded lids and (when it is played with) the smell of the product. These features have been consistently used with the brand as long as I can remember. These elements are not used in combination by any other producer of a modelling product or compound and could not be used to mark out a reputable competitor product because they make a connection with the "Play-Doh brand”. In his second statement he sought to maintain that even the colourway alone was enough to indicate a Play-Doh product, but I think this is more an indication that his views are extreme and atypical than anything else.

Mr Kaczmarek was the driving force behind the introduction of the product which is now called YUMMY DOUGH. The product was the invention of his children Sarah and Luisa, whose names form part of the logo on the front of the packet. Mr Kaczmarek and his family live in Germany, and so the product as originally conceived had a German name and packaging. The name chosen by his children was an invented word “ESSKNETE”. There was evidence about how this invented word should be translated into English. The first three letters “ess” denote edibility, from the word “essen” meaning “to eat”. The remaining five letters are a short form version of “knetemasse” which can be translated as “modelling dough” or “modelling clay”. The word in German for a baking dough is “teig”. A direct translation into German of “play dough” could be “spielknete” or “spielteig”.

The ESSKNETE packaging looks like this: [image removed]

The words “kneten” “backen and “naschen” mean “knead”, “bake” and “eat”. The line at the bottom of the front of the package is “Das Rezept gegen Langenweite!” which means “The recipe against boredom!” This is of course entirely different to the English strap line.

In December 2007 the first defendant wrote through its German trade mark attorney Dr Meyer-Dulheuer to Hasbro Inc and Hasbro Germany seeking their consent to the use of YUMMY DOUGH. The first defendant was aware at this stage of the trade mark registrations for “PLAY-DOH”. In their response from Dr Niebel of Baker & McKenzie, Hasbro sought to impose certain conditions, including: (a) not using YUMMY DOUGH against a red coloured background, (b) not marketing YUMMY DOUGH in a red/yellow coloured get-up, (c) marketing the product as “edible dough” but not as “play dough” (translated from the German word “spielknete”), (d) not registering YUMMY DOUGH for goods in Class 28 (toys). This was an ambitious response by Hasbro, going far beyond anything their trade mark protection might have given them. Dr Meyer-Dulheuer replied objecting to the asserted right of Hasbro to dictate the colour scheme in respect of colours that are “two of the three basic print process colours”. He also pointed out that the concept of “edible dough” involved allowing children to play with it. However, his client would agree not to market the edible dough as a “pure play dough, though it must continue to be possible to indicate the play value. Our client intends to sell its product, with the “Yummy-Dough” trade mark, as “edible dough” or “baking dough” as the case may be”. An attached exemplary print from their website described the product as “The Edible Plasticine”, although this was later removed when it was realised that “Plasticine” was a registered trade mark. There was no use at this stage of “the edible play dough!”

At the same time as the legal approach through Dr Meyer-Dulheuer, Mr Kaczmarek had contacted Markus Grossweischede at Hasbro Deutschland GmbH (“Hasbro Germany”). The contact was made through a business contact network, but Mr Grossweischede was sufficiently interested to offer to put Mr Kaczmarek in touch with senior executives within Hasbro Germany. In early 2008 Mr Kaczmarek arranged to meet Mr Grossweischede together with Mr Eichhorn, the General Manager of Hasbro Germany, at the Nüremburg Toy Fair. This was the beginning of a sustained attempt by Mr Kaczmarek to interest Hasbro in some form of commercial co-operation in which his product would be taken under Hasbro’s wing.

In his witness statement Mr Grossweischede sought to characterise this meeting as “not as innocent as simply seeking brand clearance for Yummy Dough”. This was a bizarre remark given that Mr Kaczmarek was approaching Hasbro in an open fashion in order to seek a possible commercial involvement with Hasbro. He seemed to be suggesting, with the benefit of hindsight, that Mr Kaczmarek should have indicated at this stage that he wanted to call the product “the edible play dough”. But this decision had not been taken at this time.

Mr Grossweischede also said in his witness statement that one of the Hasbro representatives told Mr Kaczmarek that he:

“would need to be careful to ensure that there was “clear blue water” between our product and Essknete, as we would not want customers to confuse the two, especially as Play-Doh is not designed to be eaten”

In cross-examination Mr Grossweischede denied that anyone had said anything about clear blue water. He went on to suggest that whatever was said was “back home” and not at the meeting itself. I find that no relevant warning of any kind was given to Mr Kaczmarek at this meeting.

The meeting at the Nüremburg Toy Fair was followed up with a further meeting at Hasbro’s offices in April 2008 attended by Mr Kaczmarek, Mr Eichorn and Mr Roucka, the brand manager for Germany. Either at or following the meeting Mr Kaczmarek indicated various ways in which Hasbro could participate in YUMMY DOUGH, either by way of an investment in the first defendant or by way of marketing co-operation. Later, on 25^th April 2008, he sent a more detailed presentation. The literature still had “the edible plasticine” on it, and did not refer to “the edible play dough”.

In May 2008 Mr Roucka emailed Mr Kaczmarek with proposed changes to a non-disclosure agreement between Hasbro and the first defendant so as to allow further disclosure of the YUMMY DOUGH idea to Hasbro. In the same email Mr Roucka said that he and Mr Eichorn would continue to ensure rapid co-ordination with international colleagues. On 19^th May 2008 Mr Roucka asked for further details about the market for YUMMY DOUGH, such as size, retail prices, product range and samples at the request of “the international Hasbro colleagues”. He said “Our common theme appears to be gathering speed”.

According to Mr Grossweischede, in the summer of 2008 a decision was taken within Hasbro Germany not to proceed any further with a co-operation with the first defendant. That decision was, however, not communicated to Mr Kaczmarek.

YUMMY DOUGH was launched in the United States in February 2009 at the New York Toy Fair using the US company PlaSmart as distributors. The strap line used in the initial United States marketing of the product was “the edible clay”. Mr Kimber, of PlaSmart had advised against use of the words “play dough”, despite the fact that Mr Kaczmarek was quite keen to use it. Mr Kimber considered “play dough” to be too close to Hasbro’s PLAY-DOH, and thought he would be sued by Hasbro if he adopted it.

The US packaging was then supplied to the second defendants in the UK so that they could make changes to it for local conditions. Mr Sharman of the second defendants said that he did not like the connotation of “the edible clay”. He thought the connotation was “earthy, heavy and industrial and not something you would want to eat”. His suggestion was “the edible, mouldable dough”. On 7^th May 2009 he wrote to a number of companies offering “Yummy Dough –the New – mouldable, edible play dough from MapsToys” (my emphasis). He attached in each case a sales sheet with the “mouldable, edible dough” in a prominent position and a bullet point saying “the mouldable, edible, playable dough”.

Phillip Ehrlach of a marketing agency called Vier für Texas was advising the defendants at this stage, liaising closely with Mr Kaczmarek. In an email also on May 13^th he expressed scepticism about using “the edible mouldable dough” on the sales sheet and suggested to Mr Sharman that the words “The play dough” be used on the basis that the defendants could make a better claim to being a dough than could PLAY-DOH themselves. The terms of this email are rather cryptic:

“Since the only translations of our German “Knete” are product names, how about retransforming a brand name back into a generic term: The play dough.”

Mr Ehrlach was not called as a witness. Mr Sharman was not really sure what he meant. The brand name referred to was obviously PLAY-DOH, but it is not clear what Mr Ehrlach meant by the suggestion that “knete” could only be translated as “product names”. If he meant that it had to be translated as “dough”, then he was clearly wrong. Hasbro attach significance to this email as it shows a recognition that PLAY-DOH at least is a brand name.

Mr Sharman’s response on the morning of May 14^th was to say that he had had a good response from market research on “the edible mouldable dough” but that he “quite like[d] the edible play dough also”, that is to say the term he had used in his letters of May 7th. By the afternoon he had agreed with this approach for both the sales sheet and the packaging. He suggested the addition of an exclamation mark so that it read “The edible play dough!” On 15^th May Mr Kaczmarek emailed Mr Sharman to lend his support to the choice of “The edible play dough!” By May 15^th Mr Sharman was saying that “I definitely think – The edible play dough – is the way to go. Everyone seems to like it”.

YUMMY DOUGH in the new packaging was shown at the Harrogate Toy Fair on 19^th to 21^st May 2009.

On June 18^th 2009 Mr Sharman received advice from a food standards official at Surrey County Council, a Mr Peter Grant. Mr Grant asked whether “play dough” was “intellectual property”. He said he did not think so but thought he should raise it. Mr Sharman responded rapidly to say “No Problem with IP on play dough. Hasbro’s brand is “Play-Doh”. Mr Kaczmarek emailed Mr Sharman thereafter saying that they needed to get advice from food standards people “that we should call it “Play Dough mix”.

The words “the edible play dough” have been an important part of the defendants’ promotion of the product, appearing on their website and websites of other traders. There has been extensive and consistent usage of “YUMMY DOUGH – the edible play dough”, all in one breath, in relation to the defendants’ product. Mr Hobbs described this as a “naming process”, and I think he was right to do so. The defendants go much further than simply using the term “play dough” to describe the contents of the packet: they have made “the edible play dough” an important part of their naming, branding and marketing.

On 15^th June 2009 a meeting was arranged between Dr Meyer-Dulheuer and Mr Kaczmarek on behalf of the first defendant and Dr Niebel and Mr Markus Grossweischede for Hasbro. This meeting was arranged in order to settle a dispute which had arisen between the first defendant and Hasbro over the use of the first defendant’s trade mark “Knetleckerein”. A dispute of fact has arisen about whether Mr Kaczmarek showed a mock-up of the UK YUMMY DOUGH packaging to the Hasbro representatives at the meeting. Dr Niebel’s evidence, in his first witness statement, was that he did not recall being shown the packaging, and if he had been he would have reacted strongly to it. However, by the time of his second witness statement, he did recall discussion about the use of “play dough” descriptively, and this much was recorded in his contemporaneous notes. Presumably this would have provoked a similar reaction in Dr Niebel: indeed he says in his second witness statement that this would have been “no more acceptable”. However, he did not recall having the “strong reaction to it”. Mr Grossweischede’s evidence was that he did not recall even the discussion concerning descriptive use of “play dough”. His recollection of the meeting was in places in conflict with that of Dr Niebel, in particular as to the order in which things were discussed. He accepted that his recollection of the meeting was hazy. Dr Niebel did take away some documents from the meeting, but none of them was the packaging, or any copy of it.

Dr Meyer-Dulheuer was not called as a witness, and the witness statement which he had made was removed from the bundles. I am left therefore with the evidence of Mr Kaczmarek, Dr Niebel and Mr Grossweischede.

On this point I prefer the evidence of Mr Kaczmarek. For him the burning issue was his product YUMMY DOUGH. Messrs Niebel and Grossweischede, on the other hand, were primarily concerned with settling the “knettleckerein” dispute. For them, YUMMY DOUGH had nothing to do with the meeting. I think the most likely explanation is that they have simply forgotten what they were shown, and that Mr Kaczmarek has not. I do not think the incident is of much significance. Mr Kaczmarek was certainly not given the all clear. His nervousness about Hasbro’s attitude to “the edible play dough” persisted long after this meeting.

Boxes of YUMMY DOUGH were to be shipped in packs of 7 in shallow trays (of the kind you sometimes see in supermarkets holding tins or packets). Messrs. Kaczmarek and Ehrlach decided on “Contains the daily allowance of fun” as a catch phrase for the side of the tray, noting that “the edible play dough” might be attacked by Hasbro. Mr Hobbs sought to characterise this as a deliberate attempt by the first and second defendants to conceal what they were doing from Hasbro. Mr Kaczmarek rejected that suggestion and I do as well. The tray would not have served to conceal what the defendants were doing from Hasbro, as the strap line would be visible to all in the shop as soon as the first carton was removed, and in most situations the product would not be displayed in the tray. What this evidence does, however, disclose is a continued nervousness on the part of Mr Kaczmarek about what steps Hasbro would take in relation to “the edible play dough”.

In August 2009 the first deliveries into the UK of YUMMY DOUGH marked with the words “the edible play dough” took place. The second defendant advertised the product in Toy News from the July edition (which appeared some time in June), with clear use of “the edible play dough”.

About one third of the YUMMY DOUGH product sold has been sold through food channels, rather than toy shops. Some 27,000 units have been sold into the toy trade.

Subsequent to the meeting of 15^th June, Mr Kaczmarek had asked to be put in touch with someone at a higher level within Hasbro. Mr Grossweischede put him in touch with Mr Popper at Hasbro Inc. In his email of 21^st July 2009 Mr Kaczmarek described his product as an “edible play dough mix”. Mr Popper responded with a request for details of the suggested collaboration with Hasbro. On August 19^th Mr Kaczmarek indicated to Mr Popper that he would be in the US and Canada in September and suggested a meeting. He stated that sales in the UK and Ireland had just commenced, and emailed the websites of retailers Firebox and Prezzybox as well as the second defendant, the UK distributor. These sites all displayed Yummy Dough in its UK packaging with “the edible play dough”. Mr Popper replied by indicating that he has some “major safety concerns at our end”, but without specifying what these were. Mr Kaczmarek attempted to address the safety of his own product in an email of August 20^th saying “it is important for our company to learn more about your concerns”. He followed his email up the next day with a specific question about Hasbro’s “Easybake oven”. Despite his evidence that his first email was intended to be “polite”, Mr Popper did not respond to either email. In fact Hasbro did not have any safety concerns with the first defendant’s formulation. Mr Kaczmarek had wrongly interpreted Mr Popper’s peremptory email in this way. Mr Popper explained in the witness box that his concern was because “his product was edible and ours was not”. Nevertheless Mr Popper did not bother to explain this to Mr Kaczmarek, or to reply to either email in any way.

On 4^th November 2009 Dr Meyer-Dulheuer wrote again on behalf of the first defendant. After some introductory paragraphs, referring back to the earlier correspondence and identifying a number of websites, (not including the UK ones) the letter goes on (in English translation) as follows:

“The negotiations with your company concerning a possible co-operation as well as a worldwide co-existence between "Yummy Dough" and "Play-Doh" have now been going on for almost two years and our client may not see any real interest on your side in any such co-existence or co-operation. In the meanwhile, our client has established business relationships with a lot of distributors in Europe and all over the world and its business is growing fast. However, there are still your trade marks "Play-Doh" hanging like the sword of Damocles above our client's business and, so far, our client has voluntarily refrained from calling its product what it actually is, an "edible play dough", so that the ongoing negotiations would not be affected. Instead, our client called its product "Yummy Dough" and "edible clay" which not fully suited the product. As a consequence, the market entrance and product launch were impeded and the product also increased in price since a lot more communication was needed to reach the consumer than if the description "edible play dough" could have been used freely.

Since there does not seem to be much interest on your side in reaching an amicable settlement that will satisfy both sides, our client is no longer willing to voluntarily give in. The company, therefore, intends to additionally use the description "the edible play dough" on its "Yummy Dough" packages."

The letter went on to explain that the first defendant was still interested in an amicable settlement. However if that had not been achieved by the end of November, then the first defendant would "have to seek other ways to settle the problem once and for all".

On the face of it, the letter is an attempt to flush out the problem concerned with the use of the words “the edible play dough” about which Mr Kaczmarek was still anxious. However, far from having “voluntarily refrained” from using the words to date, product with the strap line had been shown at the Harrogate Toy Fair in May, the products had been produced bearing those words for the UK, imported into the UK and sales had commenced. The addition of the words “edible play dough” was not something that the first defendant intended to start doing in the future. They had not incurred additional marketing costs by not being able to use the words, at least in the UK.

It was submitted by Mr Hobbs, and put to Mr Kaczmarek in the course of a lengthy cross-examination on this point, that this letter was a part of a sustained attempt to mislead Hasbro into believing that the defendants were not using “the edible play-dough”. I do not accept that submission. Mr Kaczmarek did believe that the name YUMMY DOUGH itself was something of a compromise, and that the use of “the edible clay” as a descriptor in the United States was not the best way of describing his product. He knew that “the edible play dough” was something that Hasbro did not want him to use. The overall sentiment which he was seeking to get across by means of this letter was that all forms of restraint would be removed if a commercial agreement was not reached.

The reason I reject the more extreme version urged on me by Mr Hobbs is because it is so unlikely that such an objective could have been achieved. It is wholly inconsistent with the fact that some weeks before Mr Popper had been provided with links to websites which showed that the defendants were actually using “the edible play dough”. If the first defendant was pursuing a policy of concealment about what was happening in the United Kingdom, then it was a wholly inept one. Not only were the packages clearly marked with “the edible play dough”, but they had been shown at a toy fair in England. Moreover the second defendant had been advertising in Toy News since July. Mr Foster produced the Toy News advertisements as an exhibit to his witness statement. Toy News is, according to the unchallenged evidence of Mr Foster, “the leading UK Toy Trade publication – distributed to the Toy Trade in the UK and available online internationally”. Ms Runnacles described a policy of concealment coupled with regular advertising in this publication as “eccentric”. I would call it improbable in the extreme.

Nevertheless it remains clear that Mr Kaczmarek was acutely aware of Hasbro’s objection to the “edible play dough”. He cannot have come away from the June meeting believing that he had received anything like a green light in respect of its use. His anxiety about Hasbro’s attitude is supported by the evidence about the tray. Indeed the letter of 4^th November only makes sense in that context. Mr Baldwin did not submit otherwise. The drafting of the letter was undoubtedly unfortunate, but a deliberate attempt to mislead is not established.

On 6^th November 2009 Mr Kaczmarek wrote to his advisory board and shareholders, which included Mr Feuersenger of Aeris capital and Guido Polko of living-e.com. He enclosed a copy of the letter of 4^th November 2009 from Dr Meyer-Dulheuer to Hasbro and explained his position that he considered the mark “Play-Doh” to protect a generic term – the omission of some letters not being enough to create a phonetic differentiation. He planned to apply to revoke the marks in national patent offices, and sought his backers’ prior consent.

This letter provoked a response from Guido Polko. His email was as follows:

“Great idea and I agree with you, "edible clay" just does not fit. In addition "edible plaz [semble play] dough" would be clear what is involved and one would touch upon Hasbro's high profile. Some might even assume that it involves a Hasbro product.

But you are getting into conflict there with a 3.5 billion market giant, who can also shoot back quickly and may have better guns. Hasbro could of course also apply to have "Essknete” cancelled because it is also generic. Risky undertaking that I would try it too!"

Mr Kaczmarek’s response dealt with the suggestion that the Essknete mark might be vulnerable, but did not disagree with the suggestion that use of “edible play dough” might “touch upon Hasbro’s high profile” or lead people to assume that it involves a Hasbro product. In his oral evidence Mr Kaczmarek did not accept that Mr Polko was making a good point. The point certainly had no effect on his plans to press ahead with the use of the strap line.

Mr Feuersenger was copied in on this email but did not recall seeing it at the time. When asked about Mr Polko and his points about Hasbro and consumer perception he said that Mr Polko was “known to be very reasonable” and what he had said in this instance was “a fair point”.

Needless to say, Hasbro relied strongly on Mr Kaczmarek’s and Mr Feuersenger’s reaction to the point made by Mr Polko. They say that it shows that Mr Kaczmarek and his backers were aware that the phrase complained of would take advantage of Hasbro’s goodwill – the high profile – and that it would involve a risk of origin confusion as well. Yet they pressed on.

A similar point was made in relation to Mr Kaczmarek’s reaction to the discovery that a UK internet retailer was using the line “Yummy Dough – The Edible Play Dough (Playdoh)”. Mr Kaczmarek had found this whilst doing a Google search for “Hasbro edible play dough”. His email to Mr Sharman was:

“I am not sure that they don’t overdo it with mentioning the Hasbro trademark within the description. If you talk to them let them know it would be better to remove this part”.

There was no evidence that Mr Sharman followed this up or that Mr Kaczmarek troubled to discover whether he had. Use of this kind is of course not the direct responsibility of the defendants. Hasbro rely on it as indicative of a relaxed attitude on the part of the defendants to ensuring that adequate efforts are made to distinguish the defendants’ product from that of Hasbro.

The evidence establishes, in my judgment, that the defendants did not really take any particular care to ensure that the claimant’s rights in PLAY-DOH were respected. They were convinced that the fact that the mark had descriptive connotations meant that the only limit to the use which they could make of PLAY DOUGH was not to use PLAY-DOH itself.

On 8^th November 2009, Tom Eriksson of Aeris Capital wrote to Ted Philip of the main Hasbro Inc. board suggesting a meeting between someone from the Strategic Development Group at Hasbro about the first defendant. This provoked a suggestion that they write to Mr Hargreaves, another Hasbro Inc. board member. Mr Feuersenger wrote on 10^th November. He explained that the product was introduced into the English speaking market as Yummy Dough “which is not as self explaining as “Play Dough”. He suggested that Mr Hargreaves look into the matter with a view to finding a solution.

These further approaches led to a further meeting in Germany between Mr Kaczmarek on the one side and Mr Hojitink and Mr Grossweischede on the other. The minutes record that Mr Kaczmarek wanted to:

“receive “OK” from [H]asbro to use brand name extension for “yummy dough”: “– the edible play dough”

– as the extension is of vital interest for 123 in order to grow the company and/or sell shares in it, 123 will ask for the abolition of the brand rights of “Play-Doh” in case there is no solution.”

The use of “the edible play dough” as a brand name extension is an accurate description of what the defendants were doing on their product and website.

The minutes also record that negotiations must go through “Hasbro legal”. It was recommended that Mr Kaczmarek contact Julia Runnacles of that department in London to work on a peaceful solution. It is also recorded that Hasbro was not interested in distribution rights.

Mr Kaczmarek said that Mr Hojitink accepted at the meeting that “the edible play dough” was the best way to describe the product. There is no reference to this in the minutes, and Mr Hojitink cannot recall exactly what was said. I think it is likely that Mr Kaczmarek did say that “edible play dough” was the best way of describing the product, as it had been a consistent theme of his up to this point. However, having seen him in the witness box, I am not persuaded that Mr Hojitink made any concessions about this. In making that finding I do not suggest that Mr Kaczmarek has given untrue evidence. I think he probably read more into the conversation than Mr Hojitink intended. The point is of no real substance in any event.

The suggested discussions with Julia Runnacles of Hasbro’s legal department in the UK took place in late December 2009 early January 2010. There is again, unfortunately, a serious conflict of evidence about what was said between the two.

During a first telephone call on 16^th December 2009 Ms Runnacles explained that she considered “the edible play dough” to be an infringement of Hasbro’s trade marks, although she indicated a degree of flexibility (subject to checking with the US IP team) to descriptions such as “dough mix for play”. Her line was that “dough” and “play” could not be used next to each other in the same sentence. Mr Kaczmarek and Ms Runnacles did not speak again until January 21^st 2010. In her first witness statement Ms Runnacles said that she asked Mr Kaczmarek why he was so insistent on using “edible play dough”. She says he replied “because I can charge a lot more money for it”. She then claims to have said “Aha! That is exactly my point! You are exploiting our goodwill in our brand to your advantage”. She says that he then agreed to discuss alternatives and get back to her.

Mr Kaczmarek’s evidence about this conversation in his second witness statement was that Ms Runnacles had misunderstood. What he had said was that baking mixes were very cheap compared to toys, and that if he could market the product as “a play dough” he could charge a much higher price.

In her second statement Ms Runnacles revealed that there was rather more to this conversation than her original statement had disclosed. She produced some manuscript notes of the conversation and then said this:

“He [i.e. Mr Kaczmarek] then went on to tell me that the reason he wanted to sell his product in the toy and games industry is because he could charge more than selling it as a food product. This prompted the exchange I mention in my first witness statement, about the reason why he was able to charge a lot more money for Yummy Dough was because he was using the words “Play-Doh" and thereby exploiting the goodwill in our brand to his advantage. This is what I meant by "using Play-Doh price point", which I then drew a box around.”

Mr Baldwin submitted that Ms Runnacles had abandoned her position about the nature of the admission in cross-examination. My own impression was that she had not abandoned it and maintained that the point about charging more by use of the specific term “edible play dough” arose as a separate point. I do not doubt that she recollected the conversation in the way she described.

The manuscript notes do not record the admission that Mr Kaczmarek is said to have made, or anything remotely akin to it. This is a striking omission by a solicitor with expertise in trade mark and passing off law. Mr Kaczmarek’s position was that his product needed to be positioned as a toy in order to gain the maximum retail price, and needed to be described as what it was, an edible play dough. Ms Runnacles accepted the first point but did not accept the second. So from her point of view Mr Kaczmarek was using “play dough” to command a higher price, and Mr Kaczmarek probably accepted that that was so. But I cannot accept that Mr Kaczmarek said that he would be able to charge a higher price for positioning his product as a toy and a higher one still for calling it an edible play-dough. It is far more likely that the two points got confused in the ebb and flow of discussion.

Nevertheless it is clear that Mr Kaczmarek did agree to reconsider in the light of Hasbro’s continuing objection, but decided to stand firm. Mr Kaczmarek wrote on 1^st February saying that “As promised we have been discussing the whole issue again with our distributors and customers”, but that all of them said ““edible play dough” is the best solution”. He added that he was considering changing the trade mark from “YUMMY DOUGH” to “THE EDIBLE PLAY DOUGH”.

Ms Runnacles replied by saying that the distributors and customers prefer that option “for the reasons we have discussed” because they would directly benefit from Hasbro’s goodwill in their trade marks. It is significant that, only a few days after the alleged admission, she only said that the point had been discussed, not that it was one which Mr Kaczmarek had acknowledged was correct.

On 16^th February 2010 Mr Kaczmarek wrote to Ms Runnacles to inform her that the first defendant had applied in Germany to register a combined device mark of the Sarah and Luisa brand with the words “Edible Play Dough” in large script in classes 1,16,21,28 and 30. The mark YUMMY DOUGH is not present in the mark applied for.

The applications have subsequently been withdrawn. Certain undertakings have been given in Germany, but it is not clear that they extend to other countries.

Hasbro sought to make something of the use of yellow on the defendants’ packaging. There was nothing in this, as the evidence demonstrated clearly. Nevertheless, as it formed part of the case advanced by Hasbro’s witnesses, and was met by the defendants’ witnesses, I should deal with it.

Mr Jones said that yellow was a colour widely used in relation to toys. Mr Grant refused to accept this. In his second report he said that “The yellow and red colourway could not be used to mark out a reputable competitor”. For this reason he regarded the ELC Soft Stuff product as a “very misleading product” and that “consumers in the high street would be confused into what they are buying”. The product was “packaged and positioned to confuse”. I think Mr Grant’s views in this regard are really unsustainable in the context of the evidence as a whole. Ms Marshall, a trade witness said that yellow was a good unisex colour, particularly for pre-school children. Mr Foster accepted that yellows, reds and blues were the predominant colours used in relation to toys for pre-school children, because those colours made them stand out and look interesting and exciting. However he went on to refuse to accept that a predominantly yellow colour scheme was “common for toys aimed at children of this age group”. He was shown a variety of examples of toy products and marketing using a predominantly yellow colour scheme, such as the Tonka trucks. He was also shown the Galt and Early Learning Centre modelling products, and asserted that the Early Learning Centre has chosen yellow “in homage to Play-Doh” and intentionally copying Hasbro. At one point he appeared to accept that the Crayola product was different, as they were taking their house colour of yellow which was part of their history and heritage into the product category they were choosing to manufacture. He later asserted, however, that Crayola too were using yellow because they want to be associated with the Play-Doh brand.

It is worth placing an example of a PLAY-DOH product alongside three competing products: the ELC product, the Crayola product and YUMMY DOUGH. I think that the suggestion that there is anything in any of the competing colour schemes which could be described as misleading is absurd. [image removed]

So far as the Defendant’s product is concerned, Mr Foster’s evidence in paragraph 29 of his first witness statement was that the defendants’ packaging had changed from a predominantly brown colour scheme (for ESSKNETE) to a “bright yellow with red accented colour scheme” in YUMMY DOUGH. In his cross-examination his evidence was far less emphatic:

“You have described yours [i.e. Hasbro’s PLAY-DOH) as a bright yellow. I suggest to you that it would not really be fair to categorise the Yummy Dough product as a bright yellow, would it?

A.

It is a warmer gold, yes. If you squint through from a distance, it has got that kind of feel about it.

Mr Hobbs sought to distance himself from all this evidence, by saying that he was not relying upon colour as an ingredient of his case. I think that was a position into which he was forced by the evidence - his opening skeleton argument had numerous references to the colour scheme chosen by the defendants: see e.g. paragraphs 4.4, 26(a).

I have mentioned already the fact that in the United States, Mr Kimber of PlaSmart was not prepared to use “the edible play dough” as he feared it was too close to Hasbro’s product. The strap line at the bottom of the front of the packaging used now in the US looks like this: [image removed]

A more international version created by another distributor carries the line “¡La plastilina comestible!” with a translation into three other languages underneath. The English translation is “Edible modelling dough!”

There is a substantial body of evidence that the term “play dough” is used in some contexts by the public as a description of a soft modelling dough for children to play with. It was relied on heavily by Mr Baldwin, so I set it out in some detail. One has to keep in mind, however, that when assessing the impact of the use which the defendants make of the term, it is its use in commerce as a brand name extension and on their product which provides the relevant context.

A Google search for “play dough” (limited to pages from the UK and conducted in November 2010) identifies a number of BBC websites (see below) as well as .co.uk sites giving recipes for play dough, including:

On the twelve pages of screen grabs from this search there are many more examples of this usage. There was an attempt by Hasbro to suggest that in this usage what was meant that one was making PLAY-DOH at home. This was hopeless, not least because the correct spelling is never used.

The BBC hosts a website entitled h2g2 (derived from their radio series The Hitchhiker’s Guide to the Galaxy based on the books by Douglas Adams). The site invites contributions from members of the public. It does not represent the views of the BBC. However the BBC have defended their contributors’ right to use the words “play dough” on this and other sites, as I indicate below. It contains the following contribution from one of its “researchers” under the rubric “Play Dough and How to Make It”:

“Play dough is a soft squidgy material that can keep children occupied for considerable lengths of time. Although it is available in a rainbow of colours, it inevitably ends up as grey crumbly mess, or alternatively, a smudge on the carpet. Play dough is available to buy under several brand names including Play-Doh. Making your own however is much cheaper …”.

The article goes on to provide recipes for making play dough, give guidance about how to set up play with home made play dough and to explain that “there are several board games that involve the use of play dough”.

On the BBC’s “CBeebies” website an article appears entitled “Play Dough: Faces”. It reads:

“Children love play dough. This activity helps you explore your child’s emotions while having fun together making faces out of play dough. ”

Under the heading “You will need” the writer says “Buy your own play dough, or make your own (see recipe)”.

Another part of the CBeebies website encourages readers to make “Play Dough Fimbles”, small characters made out of dough.

A further BBC webpage has another article on play dough by Clare Walters, dating from August 2004. She says

“Play dough is lovely to squish and squeeze, and to model. Your child can use it from around two years, but make sure it doesn't get eaten! You can either make your own or buy it".

Hasbro has recently (April 2010, after this action commenced) taken issue with the BBC over the use of “play dough” on their websites. They asked the BBC to remove the entries on their websites and replace them with “the official term” for such products which is “modelling compounds”. They said “PLAY DOUGH is not a term for such compounds”. The BBC replied on 10^th May 2010. They maintained that the h2g2 website clearly distinguished between the branded product Play-Doh and descriptive use of the term “play dough”. The reaction of the producers of the h2g2 website was that “modelling compound” was not a suitable substitute for describing play dough, as the public would not understand this to refer to play dough, and h2g2 would not wish to control the use of their contributor’s language in this way. Hasbro’s response was to cite the definition of infringement of a trade mark and the CJEU decision in L’Oreal v Bellure. It insisted that all references to “PLAY DOUGH” be removed.

The website “netmums”: www.netmums.co.uk was founded in the year 2000. It is has over 840,000 members. Under “Things to do-Arts and crafts-Playdough” one finds a number of recipes for playdough. Importantly the website states:

“There are many types of playdough that you can buy, but it is just as easy (and much cheaper) to make your own.”

The website “About.com” contains an article by Stephanie Broom entitled “How Old Should My Toddler Be to Play with Playdough?” The answer proffered is as follows:

“Commercial playdoughs (like Hasbro's Play-Doh or Crayola Dough) are soft and pliable and come with an age recommendation of two years and up. Harder clays usually have an age recommendation of 5 to 6 years or higher because they pose a larger choking risk. Homemade playdoughs are also soft and malleable.”

The article goes on to explain:

“Your child is less likely to want to continuously put the playdough into her mouth or eat the playdough after the age of two since her desire to explore things with her mouth is decreasing. Playdough indigestion is mostly harmless”

And again:

“With all that verbal understanding comes a greater chance that your child will actually comply with your request to stop putting playdough in her mouth. And while that request is an important one in terms of safety, there are other requests you're going to want your partner to comply with as well. (A few requests I can think of, off the top of my Mommy head: Don’t throw the playdough. Don't stick the playdough in your ear. Or your nose. Don't smash the playdough into your brother's hat. Don't step on the playdough that you just dropped on the carpet. And never, ever feed playdough to the dog, who, unlike a toddler, will actually like the taste.).

In connection with reaction to eating the article says:

“Commercial playdoughs are made with wheat ingredients as are most homemade types. Homemade types may also contain honey (which shouldn't be consumed by children under a year old) …”

Mr Hobbs warned me against placing too much weight on internet searches of this kind. He points out, quite rightly, that the internet as a tool has the power to suck in a vast amount of information and give the impression that a few isolated examples are more substantial than they in fact are. Of course I bear this in mind. But it does appear to me that there is a body of usage of the words “play dough”, or “play-dough” or “playdough” to mean, in an appropriate context, a home made modelling dough for children to play with.

The usage is not recent either. I drew the parties’ attention to a parenting textbook from the 1970s by Penelope Leach which contains a recipe for play dough.

These examples of usage need to be kept in their context, which is mostly concerned with making home made doughs for children to play with. When commercial playdoughs are discussed it is clear from the context that no one brand is being referred to. Importantly, as well, the evidence showed that not all consumers are familiar with this usage. To them “play dough” only refers to a commercial product.

A number of products were referred to in the course of the evidence. They are relied on for the way in which they are marketed and the way in which they are referred to by the public. I list them below.

Rapidough is a game in which contestants are required to make a model out of dough. The product is marketed without any use of “play dough”. However, the reviews of this product on Amazon.co.uk include:

“It’s a real race to create a playdough model before the other team guesses what their model is!”

The reviews on reevoo.com say:

“Would be a bit better if four teams of two could play, but this is not the end of the world. Also the play dough does go dry after a few months. Make sure the pots are sealed...”, (a reviewer in Somerset) and

“one of the play doughs was a bit crumbly and not very supple, soon sorted out with a bit of water”, and

“Very entertaining and cheap to replace the playdough if ever required” (a reviewer in Bingham).

This Crayola product was reviewed on Ciao.co.uk. Again, it does not use “play dough” in its marketing. One reviewer described it as “my review of the latest Crayola Play dough” and two other reviews were headed: “Playdough”. A fourth review read “Playdough is always fun for rainy days and the kids can get really creative…”.

The Toys R Us website had a “Dough Ice Cream Bar”, which they describe as giving “Hours of educational and artistic modelling fun for your child creating lots of cool play dough ice-cream models in all shapes, sizes and flavours”. There is also a “Dough Hairdresser set” where the child will have “fun growing the hair and creating different styles with this play dough hairdresser set”.

Moon Dough is a product containing dough for playing with and moulds. It is marketed like this: [image removed]

This is a serious competitor of PLAY-DOH. The line under the brand name Moon Dough is “magical molding dough”. There is no use of “play dough”.

Soft Stuff is a dough for playing with marketed by the respected toy company Early Learning Centre. It is a serious competitor for Play-Doh. A review of this product on dooyoo.com reads:

“Play dough has been a firm favourite for generations. Whether it's bought (as is often the case these days) or home-made (using the cooked or uncooked method), it's a great fun activity that's not too messy and that will entrance children of all ages (to a point). It's creative, it's sensory and it's fun.

"Soft Stuff is Early Learning Centre's version of Play Dough. It's a re-usable modelling dough that comes in a variety of bright colours..

Soft Stuff can be bought in tubs (a la Play-Doh) or …"

Another two reviews, this time on reviews.elc.co.uk say

“I was a bit disappointed with this product as the faces are difficult to use -they are too big for my son to use on his own, and I find them hard as the faces don't come out properly and the play dough gets stuck making it difficult to pick out again. Having said that my son loves getting out the playdough to play with and it's nice that this set comes with playdough - but a bit pricey seeing as he can only use the rolling pin and the cutter" and

“my son will not stop playing with this set. It's the first time he's had playdough and he can't get enough of it…

There is no use of “play dough” on the product itself.

The Disney Store website advertises its Toy Story Dough Set, a dough kit carrying merchandising from the film Toy Story 3. This is obviously a serious commercial product. Although the product itself avoids the words “Play dough”, the Disney website describes the products as a “Toy Story 10 Piece Play Dough Extruder. [image removed]

This is a dough set marketed under the brand Melissa and Doug. It is sold as a “Shape, model and mould set”, without the use of “play dough” on the product. Melissa and Doug are a reputable United States company now marketing their products in the UK.

The Imagination Station, a UK website describes it as a Shape Model and Mould Play Dough Set” and as “modelling play dough”. In addition it says “When you run out of play dough, make your own”.

This is the first of the products marketed as PLAY-DOUGH. House of Marbles have agreed to withdraw it. It formed part of a series of products which included “WATER COLOUR PAINT SET” and “MODELLING CLAY” with similar branding. It looked like this: [image removed]

House of Marbles trade predominantly with gift shops and craft shops. Mr Grant had dealt with them. They distribute their products nationally.

Smyths are a major Irish toy shop. They sell a product consisting of a set of tubs of dough, with the word “play” displayed in the top left hand corner, separately from the word “dough” in the centre. [image removed]

“Play” is a (very descriptive) brand name for a range of toy products. The manufacturer responsible for the range has a large showroom in Hong Kong where large retailers such as Smyths can go and select products to import for themselves. Play is a long established company. Mr Grant had previously seen examples of this product, but there is nothing from which to derive any feel for the length or intensity of this use.

This product is offered in a transparent plastic box with an outer cellophane wrapper with the label. It comes from a company in Leigh on Sea, Essex. The website refers to their product, and home made products, as “playdough”, distinguishing from “traditional “playdoh”. There is nothing from which I could derive length or intensity of use. It looks like this: [image removed]

[image removed] This product is made by Henbrandt Limited, based in Ipswich. It is advertised on a .co.uk website called Parteaz, which also appears on the product. Henbrandt are a well established company. Mr Grant did business with the current Managing Director’s father. They have a very large stand at the spring toy fair at the Birmingham Exhibition Centre and have national coverage. They mainly supply newsagents with low value toys. Mr Grant said they were not a “mainstream” supplier, but they are clearly a reputable and substantial supplier with good knowledge of the trade. There is nothing from which I could derive length or intensity of use.

This product carries the Tate Gallery brand. It is a small round bucket containing 8 different colours of dough, some cutter shapes and a rolling pin. The label carries the words “Play Dough Bucket” in plain typescript. Again, I know nothing about length or intensity of use.

There were others as well for which I had little more than a page from the internet. These were a tube labelled “6 tubs of play dough” from Time4Toys; a Giotto Maxi dough Set by Fima advertised on Amazon.co.uk as being sold by Green Oval Toys Limited and containing “Pens, Markers and Play Dough”; Christmas Cookie Cutters advertised as Play Dough Cookie Cutters advertised on Amazon.co.uk; a product advertised as 4PK Play Dough by SAR Holdings Limited, also advertised on the Amazon website; plain tubs of dough advertised as “Play Dough” by Toyday, (although apparently out of stock on their website (but not on Amazon); 10 different colour pots advertised as Hobby/Play Dough on Amazon; a “play dough set with 3 doughs” also advertised on Amazon; a “Play dough Icecream Sundae Set” by Toyday advertised as such on Amazon and on the Toyday.co.uk website; “My First Play Dough Station” consisting of a dough set with yellow tubs by Matalan.

Ms Runnacles’ evidence was that Hasbro considered most if not all of these products and usages to be open to objection by Hasbro.

There is little evidence of any longstanding use of “Play dough” as a brand name for these products. Traders, on the whole, manage to market competitive products to Play-Doh without using “play dough”. There is a tendency in the descriptive material which I have reviewed to use “play dough” to describe products which are not Play-Doh.

Two books were produced in evidence, and a third title was identified:

The context here is all home made play dough.

The Oxford English Dictionary contains the following example of a combination word involving the word “play” (in its non-dramatic sense):

“play-dough (orig. U.S.) a child’s modelling clay”

The same entry gives a whole variety of play- words, including;

“play-activity; play-area;… play-centre; … play-hour; … play-toy; play-world…”

The following are cited as examples of usage:

“1959 J. FOSTER Educ in Kindergarten (ed.3) xi. 176 Clay, plasticine, play dough, sawdust and paste,.. all afford the child the opportunity to make a three-dimensional impression of one sort or another. 1969 B. RYAN “Your Child & First Year of School iii. 56 Play-dough, if it is made from scratch from salt, flour, water, and perhaps a little alum as a preservative, gives an even broader experience of chemistry before little fingers begin to manipulate it. 1970 G.R. TAYLOR Doomsday vi 126 Asbestos powder mixed with water is even given to children, in some schools, as play-dough. 1977 C. McFADDEN Serial xi. 29/2 she was standing at the sink digging the play-dough out of her demitasse cups. ”

The 6^th Edition of the Shorter Oxford English Dictionary published in 2007 cites the following as an example of a combination usage (alongside words like “playfellow”, “playmate”, “play-material”, “playpen”, “playroom”, “playscheme”, “platschool”, “playsuit”:

“Play-Doh (proprietary), play-dough a child’s modelling clay.

Earlier editions contained the reference to “play-dough” but not the reference to “Play-Doh”.

As to alternative descriptors, Hasbro’s in house witness Mr Foster said that consumers do not use language like “reusable modelling compound”. Their expert Mr Grant agreed that “modelling compound” was not the sort of expression that the public would use to describe one of these products, although Mr Grant thought that it might be used for an adult modelling clay such as FIMO. Mr Grant said that, in the context of a toy store, “modelling compound” would not mean anything at all to the consumer, and would not be appealing to them.

The defendant’s case on invalidity is pleaded as follows:

“If and insofar as the Claimants allege that the public will draw no distinction between [PLAY-DOH marks] and the words "play dough" in their normal descriptive sense, then the [PLAY-DOH marks] are invalid because they consist of signs which the public will recognise as being devoid of distinctive character and signs which may serve in trade to designate the kind, quality and intended purpose or other characteristics of the goods for which the [PLAY-DOH marks] are registered."

The attack is expressed in conditional form. This is not a satisfactory way of advancing a case on invalidity. Invalidity is advanced on the condition that the claimants allege that there is no distinction made by the public between the marks and “play dough” in its “normal descriptive sense”. However, as Hasbro do not accept that “play dough” has a normal descriptive sense in commerce, that is not an allegation which they are ever likely to make.

Technically, invalidity has to be assessed at the dates of applications for registration of the marks. The claimants join issue with the defendants on the allegation of invalidity and contend in any event, as permitted by Article 3(3) of the Directive, that the mark has acquired distinctive character by use. Mr Hobbs submitted that it is legitimate to take the short cut of asking whether the marks now possess a distinctive character: because, if they do, it simply does not matter whether they did or did not at the dates of their respective registrations. I accept that submission, particularly as, at the dates of registration the marks had already benefited from extensive use.

The approach to the assessment of the ability of a mark to distinguish goods of one undertaking from those of other undertakings was set out by the CJEU inCase C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v. Klijsen Handel BV [1999] ECR I-3819:

“22.

In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee v Huber and Attenberger [1999] ECR I-2779, paragraph 49).

23.

In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee paragraph 51).”

The overall assessment must be performed through the eyes of the “average consumer”, see, for example, Case C-299/99 KoninklijkePhilips Electronics BV v Remington Consumer Products Ltd. [2002] ECR I-5475 at [65]. Yet, as the above citation from Lloyd recognises, a mark can possess distinctive character if only a proportion of the relevant public recognises that the mark means that the goods originate from a particular undertaking. The proportion of the relevant public which identifies the mark as denoting origin is a factor which the court must take into account in assessing distinctiveness. But it follows from this that the existence of a proportion of the relevant public who have not heard of the mark, or do not regard it as identifying the goods of a particular undertaking is not necessarily destructive of validity.

Mr Hobbs also submitted that there is no “single meaning rule” in trade marks of the kind that there was once thought to be, but there is no longer, in the law of malicious falsehood: see Ajinomoto Sweeteners Europe SAS v Asda Stores Ltd [2010] EWCA Civ 609. He relied on two decisions of General Court: Case T-112/09 Icebreaker v OHIM and Case T- 72/08 Travel Service as v OHIM both of which concerned relative grounds. The latter case shows that the Court was prepared to take into account conceptual similarity “as regards that part of the relevant public which understands English” – see paragraph 57. Those cases do not have a direct bearing on whether a mark can be distinctive to some and merely descriptive to others, but do indicate that a segmented approach is permissible.

It is also important, I think, that when assessing whether a word or phrase is capable of functioning as a trade mark, one considers its use in that context. It is for this reason that the average consumer of the specific goods or services in question is brought into the assessment. It is wrong to consider the meaning of the words when used in other contexts, such as, in the present case, in recipes for home made 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.

It is plain that the weight to be given to the various factors in Lloyd can also vary from case to case. It may be harder for a trader to establish that a prima facie descriptive term has acquired a distinctive character in circumstances where it is the monopoly supplier. In the Philips case cited above, the referring court was held at [51] to have asked, in essence,

"whether, where a trader has been the only supplier of particular goods to the market, extensive use of a sign which consists of the shape of those goods is sufficient to give the sign distinctive character of the purposes of article 3(3) of the Directive in circumstances where, as a result of that use, a substantial proportion of the relevant class of persons associates shape that trade, and no other undertaking, or believes the goods that show come from a trader in the absence of a statement to the contrary.”

The court’s answer at [65] was that use in those circumstances may be sufficient, but it added a rider:

“However it is for the national court to verify that the circumstances in which the requirement under that provision is satisfied are shown to exist on the basis of specific and reliable data, that the presumed expectations of an average consumer of the category of goods or services in question, who is reasonably well-informed, reasonably observant and circumspect, are taken into account and that the identification, by the relevant class of persons, of the product as originating from a given undertaking is as a result of the use of the mark as a trade mark."

It was not established here, in any event, that Play-Doh enjoyed a monopoly in the product. There are competing products on the market, and traders seem on the whole to refrain from using “play dough” as part of the brand name.

Mr Hobbs reminded me that it is the mark as registered which must be considered for distinctive character. That was PLAY-DOH not PLAY DOUGH. The fact that when spoken, the two were phonetically similar or even identical did not matter. There was some law under our 1938 Act which said that you could not register the phonetic equivalent of an unregistrable mark: Electrix Ltd’s Application [1959] RPC 283; [1960] AC 722. Viscount Simons said at [1959} RPC 186 line 34:

“My Lords, I can conveniently state the problem to be solved by the citation of a single sentence from the judgment of the Court of Appeal: "The doctrine," they said, "as we understand it, is that, if a given word is for any reason unregistrable in its proper spelling, then, inasmuch as trade marks appeal to the ear as well as to the eye, the objection (whatever it may be) to the registration of the properly spelt word applies equally to a word which is merely its phonetic equivalent." Applying that view of the law to the facts of the present case, the Court of Appeal held that, "electrix" being the phonetic equivalent of "electrics," and that word being unregistrable, "electrix" also was unregistrable. ”

The doctrine was nevertheless a very narrow one. A majority of the Court of Appeal (Lawton, Shaw LJJ, Brightman LJ dissenting) in Imperial Group Ltd. v Philip Morris & Co. Ltd. [1982] FSR 72 held that mark NERIT was inherently capable of distinguishing despite its phonetic similarity to the unregistrable mark MERIT. Furthermore, those cases were decided at a time when there were some marks which were regarded as inherently unregistrable in law, no matter how distinctive they were in fact: see e.g. York Trade Mark [1984] RPC 231. So to shift the enquiry to the phonetic equivalent merely raises a whole set of further questions about registrability of the equivalent.

I consider that there is a real danger in applying such a principle now in isolation from the overall assessment which Windsurfing and Lloyd require me to make. The phonetic closeness of the mark PLAY-DOH to PLAY DOUGH is but one factor which might fall to be taken into consideration in that assessment.

It is not in dispute that the PLAY-DOH marks have strong elements which refer to the kind of goods for which they are registered. PLAY in the context of toys is completely descriptive of what you do with them. DOH is the phonetic equivalent of “dough” which refers to the dough-like nature of the product. When the mark is heard rather than seen those elements are at their strongest. This is the most powerful argument against the validity of the mark. It means in my judgment that the mark has an inherently quite low capacity to distinguish the goods of one undertaking from those of another. But this is, of course, only the first of the factors in the overall assessment. 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.

These latter factors weighing in favour of validity, which are all concerned with extent of use, may be outweighed by the inherent inability of the mark to distinguish. For example in relation to the laudatory word “Treat” Jacob J (as he was then) said in British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 at 302 line 41 that:

“one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader”

The critical question is how far the evidence goes towards establishing that Hasbro have succeeded in establishing that there is a proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking. Despite the fact that I did not hear evidence from members of the public, the inescapable conclusion in my judgment is that that a large proportion of the relevant public, would take the mark PLAY-DOH used in context in relation to the goods for which it is registered as a mark of origin. It would be instantly recognisable as denoting the Hasbro product.

Mr Baldwin ran this aspect of the case on the basis that it was the mark PLAY DOUGH and not PLAY-DOH which was under attack. As I have said, I do not think that is a legitimate approach to an attack on the validity of a mark, as it ignores the overall assessment which the law requires me to perform. That assessment includes visual impact. His objective was the forensic one of causing the court to carry forward any findings about the significance of the spelling into its conclusions on infringement. In short he was running what patent lawyers would call a “squeeze” between validity and infringement.

Because of the important role it played in Mr Baldwin’s submissions, I should briefly explain why I do not think that a squeeze argument of this kind works in relation to trade marks, at least in the present case. In a patent case such arguments rely on the fact that the claim has only one meaning. If an article falls within the claim of a patent as an infringement it will also fall within the claim for the purpose of an attack on validity. The argument operates as a check on the patentee asserting a wide claim for infringement purposes and a narrow one for validity. There is no equivalent of the patent claim in the field of trade marks. The scope of protection afforded under Article 5 of the Directive has no part to play in relation to validity. By contrast 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. So a mark which gets onto the Register because of quirky spelling of a descriptive term may, by use, acquire sufficient strength to denote the goods of one trader when used as a trade mark in commerce even where the quirky spelling forms no part of the sign.

It follows that the validity attack fails.

It is not, in consequence, necessary for me to deal with a further point run by Mr Hobbs. He submits that, at least far as the Community Trade Mark is concerned, a finding that the mark is descriptive for modelling compounds could not and should not result in invalidity for the wide range of goods for which that mark is registered, including for example, playing cards and typewriters. That would leave open a whole series of fresh issues on infringement based, this time, on similarity rather than identity of goods. He says that the attack was only ever formulated as an attack on the totality of the goods for which that mark is registered. It would be procedurally unfair for him to have to deal with a case of partial revocation which has never been adequately formulated, and which would not have been wholly destructive of the infringement claim.

For present purposes it is enough for me to say that I recognise the force of those submissions. It is not sensible for me to attempt to resolve them on the basis of some hypothetical restriction of the specification of the Community Trade Mark. It would be better to await a case in which the issue arises directly.

The pleaded revocation case was as follows:

"... if and in so far as the Claimants allege that the public will draw no distinction between the [PLAY-DOH marks] and the words "play dough" in their normal descriptive sense, the [PLAY-DOH marks] are liable to revocation, since after the date on which the [PLAY-DOH marks] were registered, and in consequence of the acts and/or inactivity of the First Claimant, "play dough" has become the common name in the trade that dough which can be played with, i.e. modelling compounds.”

This attack suffers from the same problem of conditionality I have referred to above. Although Mr Baldwin did not abandon the revocation attack, he did not, as he put it, “major” on it. This was something of an understatement, as it did not feature at all in either his opening skeleton or his written closing.

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. I do not need to extend the length of this judgment by further consideration of this ground, which I reject.

There is no dispute that the signs complained of have been used in relation to goods which are identical to those for which the Hasbro marks are registered. The dispute under this provision is as to identity of sign and mark. Hasbro contends that the use by the defendants of “The edible play dough” and the other less conspicuous “play dough” signs infringe under Article 5(1)(a) because both phonetic and visual use of the signs is identical to the registered mark PLAY-DOH.

The correct test for identity of marks was referred to and explained by the Court of Justice in Case C-291/00 Societe LTJ Diffusion v Sadas Vertbaudet [2003] FSR 608 (the Arthur and Felicie case). At [54] the Court said

"the answer to the question referred must be that Art 5(1)(a) of the Directive must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer."

In Reed Executive PLC v Reed Business Information Ltd. [2004] EWCA Civ 159; [2004] RPC 40 Jacob LJ said at [26]:

“Of importance here is the recognition that an addition to a registered trade mark may take the case outside one of "identity" (see para. [51]). This is clearly sensible - one word can qualify another so as to change its impact…"

At [32] he said:

“It follows, I think, that in the case of any accused sign which has some visual significance, one must take that into account in considering the question of identity. The visual effect may be slight, but it will count even if the marks are identical to the ear. You can only have "identity" if there is both aural and visual identity”.

The first question is what sign are the defendants using? At a minimum it is “PLAY DOUGH”. In my judgment, “PLAY DOUGH” is not identical to “PLAY-DOH”. The visual differences are not such as would go unnoticed by the average consumer. The incorrect spelling of “dough” is a part of what gives the mark visual distinctiveness. It follows that there is no infringement under this paragraph.

In fact I think that the signs used by the defendants are THE EDIBLE PLAY DOUGH, COLOURFUL EDIBLE PLAY DOUGH and PLAY DOUGH MIX. Given the context, I do not think it fair to excise just the word PLAY DOUGH. So the answer to the Article 5(1)(a) claim is even stronger.

Article 5((1)(b) requires there to be established a likelihood of confusion. In Och-Ziff Management Europe Ltd v. OCH Capital LLP [2010] EWHC 2599 (Ch) at paragraphs [72] – [74], Arnold J. cited with approval the summary of the case law of the CJEU used by the UK Trade Marks Registry for the purpose of considering likelihood of confusion. Although this is in the context of registration against relative rights grounds, the principles listed all apply to infringement:

“(a)

the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b)

the matter must be judged through the eyes of the average consumer of the services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind and whose attention varies according to the category of goods or services in question;

(c)

the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d)

the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinct and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e)

nevertheless, the overall impression conveyed to the relevant public by a composite trade mark may, in certain circumstances, be dominated by one more of its components;

(f)

and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g)

a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa;

(h)

there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i)

mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j)

the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(k)

if the association between the marks causes the public to wrongly believe that the respective goods or services come from the same or economically linked undertakings, there is a likelihood of confusion.”

The summary is derived from the judgments of the CJEU in Case C-251/95 Sabel BV v. Puma AG. [1997] ECR I-6191; Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v. Klijsen Handel BV [1999] ECR I-3819; Case C-334/05 P Shaker di L Laudato & C SAS v. OHIM [2007] ECR I-4529; Case C-3/03 Matratzen Concord v. OHIM [2004] ECR I-3657; Case C-120/04 Medion AG v. Thomson Multimedia Sales Germany & Austria GmbH [2005] ECR I-8551; Case C-39/97 Canon Kabushiki Kaisha v. Metro Goldwyn Mayer Inc [1998] ECR I-5507; and Case C-425/98 Marca Mode CV v. Adidas AG [2000] ECR I-4861.

In Och-Ziff, Arnold J also pointed out that, in the infringement context, likelihood of confusion is to be determined by reference to the use which has actually been made of the sign in context (as opposed to the consideration of notional fair use in the registration context).

Hasbro rely on the use by the Defendants of the three phrases on the current packaging of their YUMMY DOUGH product and the use of YUMMY DOUGH – The Edible Play Dough on their website. They also rely on threatened and intended use of the phrase “The Edible Play Dough” as the name of the product in place of YUMMY DOUGH. This allegation is based on Mr Kaczmarek’s email of the 1^st February 2010, which I have referred to above, in which he says that the defendants were considering this course, coupled with the (now withdrawn) trade mark application which elevates “THE EDIBLE PLAY DOUGH” to the place of YUMMY DOUGH. I consider first the use of the strap line on the packaging and the website.

Mr Baldwin submits there is preliminary question, namely whether the use complained of is “use in a trade mark sense”. The Directive, of course, does not use that expression. The relevant restriction is “using in the course of trade ... 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…”

Mr Baldwin referred me to Case C-2/00 Michael Hölterhoff v Ulrich Freiesleben [2002] E.T.M.R. 79, where the Court of Justice said:

“First Council Directive 89/104 is to be interpreted as meaning that the proprietor of a trade mark cannot rely on his exclusive right where a third party, in the course of commercial negotiations, reveals the origin of goods which he has produced himself and uses the sign in question solely to denote the particular characteristics of the goods he is offering for sale so that there can be no question of the trade mark used being perceived as a sign indicative of the undertaking of origin.”

The use with which that case was concerned is a long way away from the principal use complained of in this case. The use here is on the packaging of the product, visible at the point of sale. Moreover the defendants have 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. It is aptly called a brand name extension.

This is not a case where there can be “no question of the trade mark used being perceived as a sign indicative of the undertaking of origin”. In context, and to the relevant part of the consuming public, “the edible play dough” might be understood both as being part of the name of the product and as having origin connotations. A sign used in that way is being used in a trade mark sense.

There is no doubt that there is a strong conceptual similarity between the mark PLAY-DOH and the sign “THE EDIBLE PLAY DOUGH”. Phonetically, PLAY-DOH and PLAY DOUGH are identical. Nobody suggested that DOH is pronounced as Homer Simpson would. The transcript in this case (through no fault of the shorthand writers) demonstrates the phonetic identity in that PLAY-DOH appears often where PLAY DOUGH is intended and vice versa.

There is also visual similarity, although some people would pick up the presence or absence of the extra letters UG.

Mr Baldwin submitted that there was no likelihood of confusion. He drew attention to the fact that there was no evidence of actual confusion. He also sought to rely on some answers given by Mr Grant that no-one other than someone who was not familiar with the Hasbro branding (the features such as the pots, the cloud logo, the colour scheme and so on) would be confused in an origin sense. He stressed that the “distinctive and dominant element” of the marks, if they are valid at all, must be the DOH rather than the PLAY. The marks were in any event highly descriptive, meaning that the risk of confusion was correspondingly reduced.

The comparison I have to make is between the marks as registered (not simply as words on a page but with the benefit of their acquired distinctiveness) and the sign. The absence of evidence of actual confusion is not conclusive. In The European Ltd v. The Economist Newspaper Ltd [1998] FSR 238 (CA) at page 291 Millett LJ went as far as to say that the absence of evidence of actual confusion was “rarely significant, especially in a trade mark case where it may be due to differences extraneous to the plaintiff’s registered trade mark”.

I do not think that Mr Grant’s answers are of assistance to Mr Baldwin either. He thought that there would be confusion in the case of a consumer who did not know of the Hasbro branding. There is no reason why I should assume that the relevant consumer is aware of matter extraneous to the registered trade mark. In any case Mr Grant is not an expert on confusing similarity.

As to dominant elements, in the present case it is clear that the PLAY-DOH marks have achieved the status of household names. It is, in my judgment, wrong to think of all the relevant distinctiveness of the mark as being wrapped up in the three letters DOH, or the absence of the letters UG, so that these become the dominant consideration of any comparison. There is undoubtedly a class of consumers who will see or hear the sign THE EDIBLE PLAY DOUGH and be misled into thinking it is the product they know under the mark PLAY-DOH.

I fully accept that there will be a class of customers who, seeing the strap line, will be triggered into recollections of home made play doughs, internet recipes and dictionary definitions, and will understand the words to be used in a purely descriptive sense. It is here that I have to be particularly careful to put aside perceptions derived from my own idiosyncratic knowledge or temperament. I was struck by the fact that many of the trade witnesses were, perhaps sadly, unaware of the more homely uses of “play dough”. I cannot accept that they are wholly unrepresentative of the public at large in this particular respect. There must, in my judgment, be a significant class of consumers who will be triggered into recollections, perfect or imperfect, of the mark PLAY-DOH. A mark which has been used for the length of time and on the scale which PLAY-DOH has is, in my judgment, capable of having that extended reach. To that class of customers, and taking account of imperfect recollection of the spelling, the words will convey a different meaning, namely an edible version of Play-Doh.

The likelihood of confusion is in my judgment encouraged by the particular way in which the sign is presented. Mr Kaczmarek explained the use of the definite article – “the edible play dough” - as meaning that the product is the only edible play dough on the market. But to consumers who do not understand it in that way, it could equally be seen to be emphasising that it was the edible version of PLAY-DOH. Confusion is also made more likely by the way in which the phrases have been woven together with YUMMY DOUGH as a brand name extension on the website and in advertising. The use is plainly capable of being understood in a denominative way, and would be read in that way by a significant proportion of consumers.

I have come to the conclusion, therefore, that applying the global comparative test for infringement, there exists a likelihood of confusion in the case of the strap line. Overall the combination of the various factors is sufficient to cause a significant class of consumers to assume that goods bearing the strap line and goods to which the mark is applied come from the same or linked undertakings. Accordingly, subject to consideration of the Article 6 defence, infringement is established under Article 5(1)(b).

One might have thought that the claim under Article 5(2) was barred by the consideration that it requires use in relation to goods which are not similar to those for which the marks are registered. But according to the jurisprudence of the CJEU “not similar” is wide enough to include “similar”: Case C-292/00 Davidoff & Cie SA and Zino Davidoff v Goffkid [2003] 1 WLR 1714. Our domestic statute has been amended accordingly.

The provision is concerned with extending the protection for marks with a reputation beyond the protection which is available for marks which do not. As the use complained of falls, in my judgment, within the scope of protection afforded to marks without a reputation, it would seem to follow that it ought also to fall within the extended protection. I therefore propose to deal with this ground fairly shortly.

Mr Baldwin submitted that Hasbro had not come close to establishing the necessary reputation in the marks, as opposed to the accompanying branding (the cloud logo etc).

In Case C-301/07 PAGO International GmbH [2010] ETMR 5, the Court of Justice said (in a CTM case) that:

“The degree of knowledge required must be considered to be reached when the Community trade mark is known by a significant part of the public concerned by the products or services covered by the mark”

The position is the same under the Directive – Case C-375/97 General Motors Corp. v Yplon SA [1999] ECR I-5421.

The PLAY-DOH marks plainly enjoy the necessary reputation, in that they are known to a significant part of the public concerned. I have already so held in substance when considering the validity and acquired distinctiveness of the marks.

It is also necessary to establish the existence of a link or connection between the marks and the sign in the minds of the relevant public: see Case C-487/07 L’Oreal v Bellure NV at [36]. On the basis of my finding of a risk of confusion, that requirement is also established here. However, even if I am wrong about the risk of confusion, 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.

It also follows that the requirement of unfair advantage is established. To misrepresent the origin of goods is to take unfair advantage of the goodwill attached to the marks. Alternatively, by bringing the mark to the mind in a way which falls short of actual confusion, the defendants are taking advantage of the goodwill which attaches to the marks. To those who make the connection, the signs complained are misappropriating the cachet which is attached to the marks. It is as if they are saying this is the “Play-Doh” of children’s baking mixes. Such use is unfairly taking advantage of the goodwill attached to the mark. Mr Polko got it right when he said that the words “edible play dough” “touch on Hasbro’s high profile".

Equally, as it seems to me, there is detriment to the distinctive character of the mark. It is for Hasbro to decide on the type of goods which are associated with their goodwill. They have chosen not actively to promote the eating of PLAY-DOH. They can justifiably complain of detriment if their goodwill attaches to such a product.

In paragraph 13A of its amended reply and defence to counterclaim, Hasbro gave a further reason why they said that the defendants’ use had not been in accordance with honest practices. The reason was that:

“said use comprises comparative advertising within the meaning of Directive 2006/114/EC concerning misleading and comparative advertising (the “Directive”) and the Business Protection from Misleading Advertising Regulations 2008 (SI 2008/1276 – the “Regulations”), but it is not comparative advertising which is permitted by the Directive or the Regulations.”

The pleading went on to give numerous particulars of why the use did not fall within the Comparative Advertising Directive, including the fact that the use was misleading within Articles 2(b) and 3.

The defendants’ answer, in their rejoinder, was that the use complained of was not comparative advertising. If contrary to that defence, the use was comparative advertising, then the meaning of the comparison could only be that the defendant’s product was edible, in contradistinction to the Claimants’ product.

I have been able to reach a clear conclusion in this case without delving too deeply into the Directive or the Regulations. In my judgment the defendants’ use of “the edible play dough” goes much further than making a comparison, as it is likely to give rise to origin confusion. That is enough, on its own, to take the use outside the Comparative Advertising Directive. I would prefer to leave all the other grounds on which Hasbro relied to a case where they would be determinative of the outcome.

The principles involved in Article 6 have been examined by the Court of Justice in Case C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH [2004] RPC 39 in the context of geographical indications. That case established that neither the fact that the indication is used as a trade mark nor the fact that there exists a likelihood of aural confusion is, of itself, enough to disentitle the user of such an indication to rely on the exception. The sole test is whether the use is in accordance with honest practices in industrial or commercial matters.

In Hotel Cipriani SRL v Cipriani (Grosvenor Street) Limited [2009] RPC 9 at [142] to [151] Arnold J summarised the jurisprudence of the Court of Justice in relation to honest practices under the Trade Mark Regulation in relation to “own name” cases. That summary was not subject of any criticism on appeal – see [2010] RPC 16 at [74] to [85]. Neither side criticised it here or suggested that it did not provide useful guidance in a “kind of goods” case. It is sufficient if I set out the principles which Arnold J stated:

I would add that there may be a difference between the various limbs of Article 6 when it comes to considering whether there is a good reason why confusion should be tolerated. An indication of geographical origin, or of a trader’s own name, if they are to be used at all, do not give the user much if any scope for variation as to how the indication is expressed. An indication of the kind or quality of the goods may give greater scope. A trader who insists on adopting a particular form of words which are likely to cause deception when there are others words which will convey the same meaning necessarily advances a less powerful reason as to why confusion should be tolerated.

I consider that the following considerations are relevant to whether the defendant’s use is in accordance with honest practices:

I think the defendants proceeded on the basis that, in their opinion, “the edible play dough” was a descriptive term, and that, accordingly Hasbro would find it impossible to stop them, no matter what use they made of it. They did not consider whether making it part of the name of the product would have different implications. They did not consider it relevant to consider whether, to others, “the edible play dough” - in the particular context in which they were using it on their packaging and within the toy trade- would mean the Hasbro product, or amount to taking unfair advantage of Hasbro’s goodwill, and ignored warnings to that effect.

I have already mentioned the enthusiasm which Mr Kaczmarek had for his product. That enthusiasm has led him to believe that he had a right to use “The edible play dough” irrespective of the perceptions of consumers. For all the above reasons, I do not think that the defendants have complied with the duty to act fairly in relation to the rights of the trade mark owner. The defence under Article 6 therefore fails in relation to the strap line.

These less prominent signs are not used in isolation on the packaging. The prominent strap line is part of the context against which they are read. A consumer who took the strap line to mean that the product is of common origin with Play-Doh would be confirmed in that view by these additional indications. I would accordingly hold that they are also objectionable under Article 5(1)(b) and 5(2) and that the Article 6 defence is not available for similar reasons to those I have given in relation to the strap line.

I do not think that it is right for me to go on and decide the hypothetical question of what the position would be in the absence of the strap line. The court does not normally decide hypothetical questions. Plainly, I am not equipped with material which would enable me to decide that the use of these minor indications would be justifiable in all circumstances. It would depend on what other material was used in place of the strap line, and all the other circumstances surrounding the new use. Most importantly however I have inferred that Mr Kaczmarek was not interested in using these indications if he could not use the strap line. So the point is academic in that sense as well.

The necessary elements of the action for passing off are those set out by the House of Lords in Reckitt & Colman Products Ltd v. Borden Inc [1990] RPC 341 (HL) at page 406 per Lord Oliver of Aylmerton and page 417 per Lord Jauncey of Tullichettle:

Neither side paid much attention to the claim in passing off, rather assuming that the judgment on the trade mark issues would carry them home on the additional claim. That is of course not necessarily so.

It is of course correct that absence of real-life confusion has more relevance here than in the case of trade mark infringement. In considering the passing off claim it is relevant to bear in mind that consumers are familiar with the various additional features of the Hasbro brand, such as the cloud logo and some would notice its absence on the defendants’ product. In the end however I was not satisfied that these additional features are adequate to avoid confusion amongst a significant proportion of consumers. I consider that the necessary elements of a claim in passing off are established.

There was a clear threat at the date of the claim form to elevate the use of the strap line to become the sole brand name of the defendants’ product. It is admitted in the defence that the first defendant indicated an intention to use the phrase “The Edible Play Dough” as the name of the product in place of the existing product name Yummy Dough. The defence went on to plead the first defendant had not marketed any products in that way and had in fact no intention to use the phrase in place of the existing name in the United Kingdom.

If I had come to the conclusion that the defendants’ proven acts did not amount to infringement or passing off, it would have been necessary to consider separately this originally threatened escalation in more detail. It would, for example, have been necessary to consider whether there was a sufficient continuing threat to justify continuing with the action so far as the United Kingdom was concerned, and whether there was a threat to infringe the Community Trade Mark in other member states to which that mark applies. In the circumstances it is not necessary for me to do so.

The action succeeds in relation to infringement of trade mark and passing off. The counterclaims for invalidity declarations and revocation will be dismissed.

Concordance