If ever there was an iconic figure of pop culture, it is the Barbie doll. Owned by Mattel Inc., the sale of Barbie products annually exceeds $1.4 billion worldwide, representing 35% of Mattel’s sales. Mattel says that Canadian girls age 3 to 11 are given an average of two Barbie dolls per year.
“Barbie’s,” meanwhile, is a small chain of Montreal restaurants. It is a medium-price bar-and-grill operation, most of whose items are barbecued (or, as the menu puts it, “done on the barbie-Q”). Alcohol is served, and while it does offer a kids’ menu, its clientele is primarily adult.
“Barbie” is a Mattel registered trademark. The legal troubles began when the Barbie’s restaurant applied to register the word “Barbie’s” as a trademark for use with restaurant services. Mattel opposed the application under the opposition procedures in the Trademarks Office, and lost. Mattel then appealed to the Federal Court of Canada, and lost. Mattel appealed again to the Federal Court of Appeal, and lost. Mattel finally appealed to the Supreme Court of Canada, and again lost.
The Supreme Court accepted without debate that Mattel’s Barbie trademark enjoyed an extensive worldwide reputation for dolls and doll accessories. Mattel argued that the Barbie trademark now transcends the products with which it was originally associated. The question the Supreme Court had to answer is whether Mattel could prevent someone else from using as common a word as “Barbie” for products and services entirely remote from the products that gave rise to Barbie’s fame.
In its analysis, the Supreme Court made this general observation: “No doubt some famous brands possess protean power…for example, the distinctive red and white Virgin trademark has now been used in connection with such a diversity of wares and services that it knows virtually no bounds, but other famous marks are clearly product specific. Apple is said to be a well-known trademark associated in separate markets simultaneously with computers, a record label and automobile glass. The Opposition Board’s conclusion that Barbie fame is limited to dolls and doll accessories does not at all mean that the Barbie aura cannot transcend those products, but whether it is likely to do so or not…in relation to restaurant services is a question of fact that depends on all the surrounding circumstances.”
In attempting to show that the fame of the Barbie trademark transcended dolls and doll accessories, Mattel attempted to introduce the results of a survey that posed this question: “Do you believe that the company that makes Barbie dolls might have anything to do with this sign or logo?” (The restaurant logo was then shown.) All courts refused to admit the survey on the basis that this question was an irrelevant question. As the Supreme Court stated: “The issue in these…proceedings is the likelihood of confusion. The survey question… addresses the wholly different issue of possibilities.”
The Supreme Court analysed the case this way: First, under trademark law, invented or coined words (such as Kodak or Xerox) are generally given a wider range of protection, whereas ordinary dictionary words are given a narrower range of protection. The Court decided the word “Barbie” is an ordinary word, and therefore deserving of less protection: “No person is entitled to fence in common (words) of the English or French languages, and words of a general nature cannot be appropriated over a wide area.”
As to the nature of the wares and services associated with each trademark, the Supreme Court stated: “There is no evidence that adult consumers would consider a doll manufacturer to be a source of good food.”
In the end, the Supreme Court rejected the appeal of Mattel, and the Montreal restaurateur will be allowed to register the trademark. What then does the Mattel case stand for? First, two people can generally have identical trademarks so long as the wares and services associated with each are legitimately different, as are their channels of trade. Second, the fame of a pre-existing trademark does not trump everything; fame is merely one factor that will be considered among all the surrounding circumstances.
ERIC SWETSKY is a Toronto lawyer who practises advertising, marketing and intellectual property law.
