A recent trade mark case has confirmed that a trade mark can be infringed when the sound of the mark is infringed, as opposed to the mark itself.
The case arose when the international toy manufacturer Hasbro alleged that its trade mark ‘PLAY-DOH’ had been infringed by a company selling a product called ‘Yummy Dough’, an edible dough for children, the packaging for which used the words 'play dough'. The marks were not similar in appearance, nor were the products physically identical.
The defendants argued that PLAY-DOH had become synonymous with modelling clay and was thus so generic in meaning that it had lost its distinctiveness. It would not therefore qualify for trade mark protection. They also argued that if the words PLAY-DOH could be extended to cover ‘Play Dough’, then they lacked ‘distinctive character’, which is a necessity for a trade mark to be enforceable.
The court rejected both arguments.
Being in breach of a trade mark can be a major problem. Not only can you end up fighting a legal action for infringement but any re-branding exercise and reputational damage can be considerable. It is good sense to make sure that you research trade marks before you start to use any trading style.
Click here for guidance on registering a trade mark.