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FIND
Infringement
The judge found that, although not identical, the defendants' relevant signs including "The Edible Play Dough" are very similar to Hasbro's marks. There was "visual similarity", "strong conceptual similarity" and "phonetic identity". Further, the defendants' goods are identical to those for which the Hasbro marks are registered. Applying the global appreciation test and in view of the above findings, Floyd J found there was a likelihood of confusion as "a significant class of consumers [will be caused] to assume that goods bearing the [The Edible Play Dough] strap line and goods to which the mark is applied come from the same or linked undertakings". Therefore infringement was established under article 5(1)(b) of the Trade Marks Directive. For broadly the same reasons passing off was also established. The judge also concluded there was infringement under article 5.2. This was because the marks had a reputation and "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". The judge also held that Hasbro had suffered detriment to, and the defendants' had been taking unfair advantage of, the reputation of Hasbro's marks. It was for Hasbro to decide it did not want its product, which was not designed to be eaten, associated with a product that was promoted as edible. The defendants, by associating their product with Hasbro's PLAY-DOH mark, had caused detriment to it. The defendants were also "misappropriating the cachet which is attached to the marks". In a communication with the First Defendant, Mr Polko (an investor in the First Defendant) had agreed with the
First Defendant's suggestion of using The Edible Play Dough on the Yummy Dough product but warned that such use would "touch on Hasbro's high profile". The judge concluded that "Mr Polko got it right" noting, it is "as if they are saying this is the 'Play-Doh' of children's baking mixes".
"It is wrong to consider the meaning of the words when used in other contexts, such as, in the present case, in recipes for homemade 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".
Furthermore the defendants had not, as required, acted in accordance with honest commercial practices. The judge applied the guidance as to what factors may be relevant set out in the Hotel Cipriani SRL v Cipriani (Grosvenor Street) Limited case. Key to his determination were his findings that the defendants were not only aware of Hasbro's mark all along, but also that some people involved with the Yummy Dough product thought that use of "play dough" might lead consumers to think that the product was a Hasbro product or that it was "too close" to PLAYDOH. The defendants were also aware that Hasbro would object to their use but had nevertheless gone ahead, possibly because they wrongly assumed it would be impossible for Hasbro to stop them. Furthermore the defendants had used 'The Edible Play Dough' as a brand extension. In fact, as noted earlier by the judge, the defendants 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". In these circumstances the defendants had not complied with their "duty to act fairly" in relation to Hasbro's rights and were not entitled to the protection from infringement offered by Article 6.
Comment
This judgment is also significant from an evidential perspective. It is part of a growing body of judgments where a likelihood of confusion by the average consumer is established without the benefit of any evidence of "actual confusion" or survey evidence purporting to indicate the likely views of the average consumer. The judge accepted that the "absence of evidence of actual confusion is not conclusive" as it may be due to extraneous factors. He was also confident that it was a question upon which he should, and was able to, form his own view without obtaining any assistance from either parties' expert evidence. He reached his conclusions as to unfair advantage taking and detriment in a similar way by making common sense inferences from the relevant factors. This is an encouraging sign in view of the obvious practical difficulties in providing concrete evidence demonstrating that consumers were more attracted to the defendants' goods or less attracted to the claimant's goods as a result of the defendants use of its similar sign. Some commentators had suggested that such concrete evidence was required to establish infringement under article 5.2. Key Contact Alexandra Brodie, partner, +44 (0)20 7664 0345, alexandra_brodie@wragge.com Bonita Trimmer, associate, bonita_trimmer@wragge.com John Coldham, associate, john_coldham@wragge.com This analysis may contain information of general interest about current legal issues, but does not give legal advice.
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