Barbie VS. Barbie
June 3rd, 2006Fending off copyright monopolization, the supreme court has decided that a restaurant called Barbies, cannot be confused with a doll for children. Go figure! Unanimously no less.
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From Saturday’s Globe and Mail:
Barbie not just a doll, top court rules
Trademarks not unassailable, judges decide in two cases
KIRK MAKIN
JUSTICE REPORTER
The Supreme Court broke the heart of the world’s most famous doll yesterday, ruling that Mattel Inc. does not have the exclusive right to use the Barbie name.
In a groundbreaking intellectual-property decision, the court ruled 8-0 that, while Barbie has achieved a distinctiveness within the doll world, that does not give Mattel the right to prevent very different businesses from using the name.
In a second, related case, the court again came down on the side of the underdog — a Quebec clothing store chain that adopted a name similar to a famous French champagne-maker, Veuve Clicquot Ponsardin.
The court said that there was no evidence to show that consumers were confused by the two names, nor is future confusion likely when two products are so different.
The ruling in the Barbie case was a victory for a small Montreal restaurant chain called Barbie’s that ran headlong into Mattel when it tried to register its name for use across the country in the restaurant, takeout and catering business.
“The doll business and the restaurant business appeal to the different tastes of largely different clienteles,” Mr. Justice Ian Binnie wrote for seven of the eight judges. “Whether or not there exists a likelihood of confusion is largely a question of fact.”
Lawyer Bill Mayo, an expert in the intellectual property field, said that owners of famous trademarks can take some solace in the fact that the court has left open the possibility of a trademark being so well known that virtually any use could result in confusion.
“There may be a greater likelihood of confusion when dealing with a famous trademark, but the question comes down to whether the ordinary consumer is likely to think there is a connection between the use of a given mark for a particular product and the owner of the famous mark,” Mr. Mayo said.
Lawyer Diane Cornish, another intellectual-property expert, said the ruling constitutes “a clear message to owners of famous marks that although the ‘fame’ of their mark is a consideration, it does not trump all other considerations.
“It will still be necessary to establish in the mind of consumers that the wares and services of the respective parties come from a common source or are in some way associated or linked,” she said.
Judge Binnie said that the original decision by the Trade-marks Opposition Board to disallow Mattel’s claim was reasonable in the circumstances — particularly since Mattel furnished little evidence of confusion in the minds of consumers.
Lawyers for Barbie’s restaurant had used a “slippery slope” argument, warning that if Barbie is permitted to become an unassailable patented trademark, then every Tom, Dick and Harry will be the next in line. They also pointed toward a failure of logic: Barbie dolls are marketed to girls under 12, while the restaurant’s clientele is exclusively adults.
Lawyers for the restaurant argued that its owners chose the name Barbie’s in 1992 as a play on words accenting the fact that it sells drinks and barbecued food. Mattel scoffed at that, saying that the only credible reason for it to use the name Barbie’s was to trade on the company’s famous line of dolls.
“Quite apart from the great difference between the appellant’s wares and the respondent’s services, they occupy different channels of trade, and the increased potential for confusion that might arise through intermingling in a single channel of trade is not present,” Judge Binnie said.
In the second case, the champagne maker argued that the Quebec clothing chain, Les Boutiques Cliquot, damaged its famous brand.
“The difference between the appellant’s luxury champagne and the respondents’ mid-priced women’s wear is significant,” Judge Binnie said. “While some trademarks transcend the wares, services and businesses with which they were originally associated, no witness in this case suggested that the Veuve Cliquot mark would be associated by ordinary consumers with mid-priced women’s clothing.”
