June 2005
Has Barbie been barbecued?
Mattel, the toy manufacturer who is accountable for the Barbie Doll is taking legal action against a restaurant chain that use the name Barbie's, to argue that the use of the Barbie trade mark creates an image of the much loved plastic doll and not of eateries serving barbecued food.
Mattel has taken action against a number of individuals and companies over the years, to protect its plastic doll. In January 2003 a US Supreme Court denied Mattel an appeal for the decision in the dispute over the Barbie Girl Song, which was argued by Mattel to be a trade mark infringement and ruined the doll's image. The Danish pop group Aqua, had a number one with the song Barbie Girl in 1997 and a number of years in court fees culminated in Mattel being refused an appeal, because record label MCA persuaded the judge that the song was a humorous commentary on cultural values. In December 2003, Mattel lost a legal dispute against an artist who had published a number of photos portraying the Barbie doll in various compromising positions. The Appeals court however, deemed the pictures as works of parody and satire, which could not be prevented by trade mark law.
Following the decision, the artist Tom Forsythe depicted the doll nude in suicidal situations, such as inside ovens and blenders.
BRIFFA Comment:
The Supreme Court of Canada is going to consider whether Canadian trade mark law can prevent the use of a trade marked name by third parties on products that are not only similar, but on dissimilar products and services as well. The UK law on "well known" trade marks is found in the Trade Marks Act 1994.
Section 5 (3) of the Act allows the Patent Office to refuse to register a mark which is identical or similar to a very famous registered mark, even if the application is for totally different goods where one of the following consequences would occur; (i) dilution of blurring of the Claimant's mark; (ii) tarnishing the reputation of the Claimant's mark; and (iii) freeloading on the success of the Claimant's mark.