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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Careful with Those Straplines: It's Not So Safe after Play-Doh

Advertising straplines are powerful marketing tools. They can position a product on the market in catchy, memorable ways. They are generally more flexible than brand names and can more easily be updated and adapted in response to market trends, without sacrificing the hard-won recognition bound up in core branding. They can draw out attractive features of a product or service in multi-layered slogans that cause consumers to think of the brand, and to remember it.

What straplines cannot do, however, is to shelter a competitor from a rival's trademark rights when a strapline gets too close. One entrepreneur learned this the hard way recently following the High Court's decision in Hasbro Inc. & Ors. v. 123 Nahrmittel GmbH & Ors. [2011] EWHC 199 (Ch).

A Model Dispute 

The claimant, Hasbro, was the proprietor of PLAY-DOH, the internationally famous brand name for children's modelling compounds. The PLAY-DOH product was designed for play and not for consumption, and had been an international commercial success since its launch in the late 1950s.

The first defendant, a German entrepreneur, had the idea of marketing similar modelling compounds, which children could also treat as baking doughs and eat. The brand name chosen by the first defendant was innocent enough: YUMMY DOUGH. However, prominent straplines on the packaging described the product as "The edible play dough!", "Play Dough Mix" and "Coloured Edible Play Dough Mix".

Hasbro was aware of the first defendant's product plans because the latter had approached Hasbro before launch to propose a collaboration. Hasbro was wary of a product that would encourage children to consume modelling compounds, however, and the proposal bore no fruit.

When the defendants launched the YUMMY DOUGH product in packs bearing straplines that referred to "Play Dough", however, Hasbro sued for infringement of its UK and CTM registrations in the word mark PLAY-DOH for inter alia modelling compounds in Class 16 and toys in Class 28. 

More Than Just "Play Dough" 

Despite the misgivings of its commercial contacts, the first defendant persevered with use of "Play Dough" in its straplines because it regarded the term as purely descriptive of a play version of baking dough. It considered Hasbro's rights to be restricted to the specific visual presentation of PLAY-DOH, residing principally in the inventively spelled element, "-DOH". The first defendant gambled that as long as it stayed away from that spelling, it was free to use "Play Dough".

The High Court, however, disagreed. Whereas PLAY-DOH had only weak inherent distinctiveness due to the descriptiveness of "PLAY" and the phonetic identity of "-DOH" to a word denoting dough-like qualities, this was only one part of the equation. Distinctiveness acquired through use either before or after registration was relevant, too, and in this case the evidence showed conclusively that PLAY-DOH had acquired an immense international reputation and a very high level of consumer recognition. The market share, intensity and length of use, and investment in promotion were, in the judge's words, "all...at the extreme end of that which any trade mark proprietor might ever hope to prove." As a result, in the eyes of a substantial number of consumers the PLAY-DOH mark was likely to be "instantly recognisable as denoting the Hasbro product." This proof of acquired distinctiveness meant that the defendants' attack on the validity of Hasbro's rights failed. 

The Court accepted that "The edible play dough!", "Play Dough Mix" and "Coloured Edible Play Dough Mix" were not identical to PLAY-DOH, but it did regard them as similar. In particular, the element "play dough" was conceptually and phonetically identical to PLAY-DOH, and there was also some visual similarity. To those who remembered the spelling of PLAY-DOH only imperfectly, the straplines were capable of communicating that the first defendant's product was an edible version of Hasbro's PLAY-DOH compounds. Moreover, the use of "the" in the strapline "The edible play dough!" increased the likelihood of confusion, since consumers might understand it as denoting "the" version of Hasbro's product that could be eaten. The potential for aural confusion was especially high; the judge noted that even the court stenographer sometimes typed PLAY-DOH where witnesses or counsel referred to "Play Dough", and vice versa. 

The Court accepted that the straplines would not infringe if they solely denoted characteristics of the goods and were not capable of being perceived as indicators of origin (following the ECJ in Case C-2/00, Michael Hölterhoff v Ulrich Freiesleben). However, unlike in Hölterhoff, where there had been a mere oral use, the defendants in Play-Doh were using the signs complained of on packaging and had "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." Such efforts were aptly, observed the Court, called "a brand name extension." 

The Court considered that in these circumstances, the straplines had "origin connotations" and could therefore infringe.
The Court concluded that there was a likelihood of confusion, and therefore an infringement. Moreover, given the Court's findings on reputation, it was no great leap from there for it to rule, as it also did, that the use of the straplines also took unfair advantage of the fame of the PLAY-DOH mark and were effectively "misappropriating the cachet" attached to them. In the words of the judge, it was as if the defendants were saying, "this is the ‘Play-Doh' of children's baking mixes."

The Court added that infringement was also made out on the basis that use of the straplines was detrimental to the distinctiveness of Hasbro's mark. It was for Hasbro alone to choose which goods should be associated with its goodwill in the PLAY-DOH mark. Its PLAY-DOH product was not edible and Hasbro did not wish to encourage its consumption. In the Court's view, Hasbro had cause for complaint if a similar mark linked to PLAY-DOH in the public mind were to be used for an edible product, such that Hasbro's goodwill might attach to it. 

Comment

This case is inherently interesting because PLAY-DOH is so famous. Few if any readers of this magazine will never have owned or played with PLAY-DOH products as children.

However, the real value of this decision lies in its insight into the role of advertising straplines in promoting brands. The defendant's experience shows that pithy, quasi-descriptive wording or slogans on packs or in advertisements are indeed an effective and important means of communicating with consumers-but are also fertile ground for risk. While companies often take legal advice before adopting brand names, many do not consult advisors on draft packaging and advertisements before going to print, especially in fast-paced industries such as consumer goods where speed often trumps the need for caution. The notion that any danger will lurk in core elements of branding, not in ancillary features, is deeply-rooted and widespread. 

What Play-Doh shows, however, is that straplines have in fact the same potential to infringe trademark rights as core brand features such as brand names. Where a strapline includes a third-party trademark or something similar to it, it is clear that there will be a potential for infringement. That potential is greater where the strapline is closely woven into the identity of the brand, for example where it is prominent or repeated across different media such as packaging, advertising and websites, or where the strapline includes wording that ties it closely together with the brand name so that a consumer is likely to associate them. Factors like these make it more likely that a strapline will be seen as part of branding, which takes it out of the protected realm of descriptiveness. It is clear from Play-Doh that the courts will assess the impact of straplines not in isolation, but rather in the context of the overall appearance and marketing of the product by reference to the strapline and other features of branding. 

Having packaging and advertisements reviewed by legal advisors where possible before launch is generally a sound approach. Indeed, the potential risks posed by straplines, colour schemes and packaging shape may not emerge when considered in isolation, but would become apparent when considering a proposed new pack or advertisement in its entirety. As a practical minimum, it is sensible to check prominent straplines and slogans intended for use in high-profile advertising campaigns, and any elements of branding, such as straplines, colour schemes or overall packaging shape and get-up, that are intended for long-term use. A timely legal "reality-check" of product packaging and advertising can help identify and avoid unnecessary risks that can blight a launch or new marketing campaign. In short, legal scrutiny of the "whole package" before launch may avoid less friendly judicial scrutiny later.

The Court's ruling in Play-Doh also shows the danger of underestimating the strength of a registered mark. An ostensibly weak registered UK mark or CTM can nonetheless see off a validity challenge through proof of distinctiveness acquired, if not as of the filing date, then after registration. Hasbro handled this easily with proof of the substantial fame of the PLAY-DOH mark. Of course, not all marks are on a par with this one, and no doubt many weak mark owners would not be able to rise to the occasion. Nonetheless, the defendant's experience in Play-Doh shows that it may not be wise to bank on that. For the money, there is no better offence than the defence that a trademark registration affords.