Barbie can be more than a doll, says Canada's Supreme Court

The Supreme Court of Canada recognised the same day that Les Boutiques Cliquot, a women's clothing chain, had nothing to do with the famous Veuve Cliquot Champagne in a second case.

The question in both disputes was whether well-known trade marks should be allowed to be used by others to sell goods or services in unrelated industries. Mattel was opposing a small Montreal restaurant chain's application to register its 'Barbie's' trade mark in association with “restaurant services, take‑out services, catering and banquet services.” But Mattel failed to show convincing evidence of consumer confusion.

Fame does not provide absolute protection for a trade mark, concluded the court. It is one factor to be considered with all the others. And as long as there is a difference between the parties' wares or services, consumers and channels of trade, there is no infringement on a well-known mark.

"No doubt some famous brands possess protean power," wrote Justice Ian Binnie. It had been suggested in court that the Virgin brand "knows virtually no bounds" – though the judges refrained from expressing an opinion on that. Instead, the court concluded that "Barbie's aura" could transcend dolls and dolls' accessories but that, in the case before it, there was "no likelihood of confusion in the marketplace" having regard to all the surrounding circumstances.

Lee Curtis, a trade mark attorney with Pinsent Masons, the law firm behind OUT-LAW.COM, said: "Although Mattel was defeated in this particular case, the owners of famous brands do at least now know that the Canadian courts may in the future prevent the use of famous trade marks in fields unconnected to the owners products, if such use causes confusion in the marketplace."

In Europe, famous trade marks have been afforded such protection for many years. Providing a trade mark owner can prove that his trade mark is 'reputable' and the use of the defendant's trade mark takes unfair advantage of, and is detrimental to the distinctive character of the proprietor's famous mark, then a court will prevent the use of the later mark.

"The problem is always proving that your trade mark is so well known that it is 'reputable' and that the public are in some way associating the defendant's mark with your mark and that such use is damaging the 'distinctive character' of your brand," said Curtis.