Newsletter Article
The Edible Play Dough
Published: 03/31/2011
By John McKeown A recent judgement of the High Court of the United Kingdom illustrates the problems relating to launching a new product and an interesting application of the principles relating to trade-mark infringement.
The Facts
The plaintiff makes and sells a children’s modeling composition under the trade-mark PLAY-DOH for which it had obtained trade-mark registrations. Although the plaintiff’s product can be used to make food-like products, it is not intended to be eaten and contains components that make it taste bad.
For many years the plaintiff’s product has been sold in small yellow tubs. The trade dress is predominately bright yellow. The design presentation of the mark has white lettering against a red background and looks like this:
The defendant manufactures and sells a powdered dough mix under the name YUMMY DOUGH. This product, when mixed into a dough, can be played with, but it also can be eaten raw or when baked. The plaintiff did not object to the use of the YUMMY DOUGH mark but it did object to the defendant’s use of the phrase on its packaging: “The edible play dough”. Here is what the defendant’s packaging looked like:
After lengthy discussions between the parties, the plaintiff brought an action for trade-mark infringement and passing off. The defendant attacked the validity of the plaintiff’s trade-mark registrations and denied infringement and passing off.
Invalidity
The defendant asserted that the plaintiff’s registrations were invalid since they were devoid of distinctive character and designated the kind, quality and intended purpose of the goods for which they were registered.
Under UK trade-mark legislation, validity is determined by an assessment of the ability of the mark to distinguish the goods of the registered owner from those of others. This approach is similar to the Canadian approach.
The Trial Judge observed that PLAY in the context of toys is completely descriptive of what to do with the finished product and 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. However, the lack of inherent distinctiveness was offset by the plaintiff’s significant market share, length of use of the trade-mark and extensive promotional investment.
As a result, the Trial Judge found that a large proportion of the relevant public would associate the PLAY-DOH trade-marks, used in association with the plaintiff’s product, as marks identifying a product that originated from the plaintiff. As a result, the defendant’s reliance on a claim of invalidity failed.
Infringement
The defendant submitted that the plaintiff should not succeed because the defendant was not using the words “play dough” as a trade-mark. The Trial Judge, in rejecting this argument, observed that the defendant had gone to lengths to weave the phrase “play dough” into the naming of its product. He found that the relevant consuming public would understand “play dough” as being part of the name of the product that designated origin and, as a result, the words were used in a trade-mark sense.
While the judge accepted that some consumers would understand that the words on the packaging were used in a purely descriptive sense, he found that for a significant number of consumers, recollections would be triggered, perfect or imperfect, of the trade-mark PLAY DOH. This was particularly so since the mark had been used for a significant period of time and on a significant scale. As a result, the judge felt the mark was capable of having an extended reach.
The likelihood of confusion was also encouraged by the particular way in which the defendant used the impugned words. Some consumers would interpret the phrase “the edible play dough” as meaning the only edible play dough on the market, but to other consumers who did not understand it in this way, the phrase would be interpreted as emphasizing that the product was the edible version of PLAY-DOH.
Passing Off
In order to consider this claim, a comparison has to made between the plaintiff’s packaging and the defendant’s packaging as they are presented to the public. The Judge observed that it was relevant to consider that consumers familiar with the additional features of the plaintiff’s brand such as the cloud logo would notice its absence on the defendant’s product packaging. However, in the end it was found that the additional features were not adequate to avoid confusion amongst a significant proportion of consumers.
Conclusion
A Canadian court would likely approach the issues raised in this case in a similar fashion. The Canadian Trade-marks Act provides that “trade-mark” means a mark that is used by a person for the purpose of distinguishing wares sold by that person from those sold by others. In applying this definition in the context of infringement claims, Canadian Courts consider both the intention of the defendant and the recognition by the public of the mark in issue. While it is not necessary to show both, one or the other must be shown to establish that the defendant has used the mark as a trade-mark.
While this decision is close to the line, the commercial reality seems to be that the defendant made a conscious decision to use “play dough” as a subsidiary or secondary trade-mark.
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