Mattel's opposition to BARBIE'S registration roasted by Federal Court

In Mattel Inc v 3894207 Canada Inc, the Federal Court of Canada has upheld a decision to dismiss the plaintiff's opposition to the registration of BARBIE'S and design for restaurant services.

3894207 Canada Inc applied to register BARBIE'S and design for "restaurant services, take-out restaurant services, catering and banquet services". Mattel, which owns the famous BARBIE mark for toys and in particular dolls, opposed the registration. The Opposition Board dismissed Mattel's claim on the grounds that there were significant differences between the goods and services covered by the two marks. Mattel appealed.

On appeal, Mattel introduced survey evidence to support its position that there was a likelihood of confusion between the two trademarks. The survey evidence showed that for 57% of the participants, Mattel's BARBIE dolls came to mind when they saw the BARBIE'S restaurant logo, while 36% of the participants believed that the company that manufactured BARBIE dolls had something to do with BARBIE'S restaurants. The Federal Court, however, rejected the survey results due to "blatant and determinative shortcomings that undermine its relevance considerably". It also noted that there was no evidence of any actual confusion.

Based on the survey, the Federal Court concluded that Mattel's BARBIE trademark was very well known and labelled it as "famous". However, it reiterated its long-standing position that the fame of a trademark is only one factor to be considered with respect to confusion. A court will not automatically presume that there will be confusion just because a party's mark is famous; mere fame cannot be used to infer a non-existent connection. Despite the world-renown of Mattel's mark, the court stated that the differences between the goods and services offered by the two parties could not be ignored.

The Federal Court further stated that the courts should not take a speculative and/or hypothetical approach to the confusion analysis. Notwithstanding the increased frequency of "cross-branding" or diversification, courts should only take notice of a real connection between a trademark and a specific product or service when considering confusion.

Accordingly, the court held that the proposed registration was unlikely to cause confusion with Mattel's BARBIE mark because there was no connection between the goods covered by Mattel's mark and the services offered by 3894207 Canada Inc.

Gordon J Zimmerman and Francesco Gucciardo, Borden Ladner Gervais LLP, Toronto