Mattel wins first unregistered Community design rights case

United Kingdom

In Mattel Inc v Simba Toys GmbH & Co KG (Order HC-03 CO2684), the High Court has ordered the defendant to stop producing, advertising and selling its My Style dolls in the European Union in what is thought to be the first action for infringement of unregistered Community design rights.

Mattel, the manufacturer of the famous BARBIE dolls, introduced around September 2002 a new range of dolls under the trademark MY SCENE (packaged with the slogan 'My Scene, My Style'). The new range includes a Barbie with a remodelled head and repainted face. Simba Toys GmbH & Co KG, the German manufacturer of STEFFI dolls, and its subsidiary Simba Toys (Hong Kong) Ltd imported into Europe dolls of roughly the same size as the Mattel dolls. Woolbro (Distributors) Ltd distributed the imported toys in Europe under the name My Style. The accessories sold for the My Style dolls were sized to be interchangeable with the MY SCENE accessories. The facial detail of the My Style Steffi doll was particularly similar to Mattel's MY SCENE Barbie doll.

Mattel claimed that the My Style dolls infringed its copyright and unregistered Community design rights in the face paintings and the head sculpture of the MY SCENE dolls pursuant to the Council Regulation on Community Designs. (It seems that Mattel did not claim infringement of UK unregistered design rights because, as a US corporation acting as employer of the designers, its non-qualifying nationality disentitled it to such design rights pursuant to Sections 218(1) and 219 of the Copyright, Designs and Patents Act 1988.)

On the basis of its unregistered Community rights, Mattel sought an injunction and damages in respect of the whole of the European Union.

The High Court found in favour of Mattel. The court found that although the first marketing and disclosure took place outside the European Union, Mattel enjoyed unregistered Community design rights in its MY SCENE dolls. The court also established that the My Style dolls were copies of the Mattel dolls. Accordingly, the court ordered the relief Mattel sought, together with an interim costs payment of £450,000.

This case illustrates the speed with which the UK courts can act to stop an obvious imitation and the importance of the new Community rights in stopping infringements across the whole of the European Union through a single court action.

David Musker, RGC Jenkins, London

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