Partner Debbie Brett, in our Corporate & Commercial team, looks back at the ways in which Mattel has sought to protect its intellectual property and the Barbie brand over time.
As set out in the recently released Warner Brothers film, ‘Barbie’, Ruth Handler created the doll because she wanted to see an adult-bodied doll, which was distinctive from the baby and child like dolls of the time.
The Barbie doll made its debut at the American International Toy Fair in New York City on 9 March 1959. In the first year of production, 350,000 dolls were sold. Barbie went on to become a world-renowned brand – in 2021 over 86 million dolls were sold, or around 164 every minute.
From inception, the Barbie doll has fought to defend its IP rights. For example, in March 1961, Louis Marx and Company sued Mattel claiming that Mattel plagiarised the Bild-Lilli doll. Mattel did patent a first prototype of the doll in 1961 and subsequent patents would follow.
Trademarks
According to the EUIPO, there are currently 23 registered EU trademarks protecting Barbie’s name and various iterations of the logo.
One aspect of the Barbie brand which has not actually been registered is the distinctive “Barbie Pink”. This is the renowned Pantone 219C shade which combines magenta and pink.
IP law dictates that if a company is well-known, the continued use of a particular colour can lead consumers to associate that colour with the company. In view of this, Mattel and Barbie have robustly sought to protect the “Barbie Pink” shade.
Famously, Mattel filed a complaint against MCA Records (the record label of the pop band Aqua) in 1997 after the release of the song, “Barbie Girl”. Th claim consisted of Mattel alleging that the song sullied the reputation of their trademark due to the provocative lyrics and the misappropriation of Barbie’s dress. The colour of the dress in question was a combination of white and a distinctive pink.
Mattel, however, were unsuccessful in this case. The court found that Mattel did not provide sufficient evidence to show that the pink of the dress was distinctive from other shades of pink available and the court stated that the song was a parody protected by ‘normative’ use – which is when a trademark transcends its original use and becomes part of society, for example, ‘Blandy & Blandy is the Rolls Royce of legal firms’.
More recently, in August 2022, Mattel filed a complaint against snack company Rap Snacks regarding the Barbie-Que Honey Truffle Potato Chips. Mattel argued that Rap Snacks were using colours which are closely associated with the Barbie brand. However, this case was settled after a month and so we cannot comment on the validity of Mattel’s argument.
Moving away from colour, Mattel, in June 2023, asked the US Trademark Office to reject fashion brand Burberry’s proposed “BRBY” trademark. Mattel stated that this would create confusion with the Barbie brand. Mattel further argued that Barbie is a trademark in many fields outside of toys (including clothing, jewellery, and cosmetics) and so operates in some similar sectors to Burberry. This case has not yet concluded; however, it highlights the willingness of Mattel to continue to defend its brand particularly considering the release of the recent film.
As is clear from the above, protecting your company’s image is a vitally important consideration and IP can be a very valuable asset.
Our Corporate & Commercial team can advise on all aspects of intellectual property law, including disputes.
For further information or legal advice, please contact law@blandy.co.uk or call 0118 951 6800.
This article is intended for the use of clients and other interested parties. The information contained in it is believed to be correct at the date of publication, but it is necessarily of a brief and general nature and should not be relied upon as a substitute for specific professional advice.
