Barbie – is it less than ideal?

Barbie – is it less than ideal?

July 24, 2023

Behind the scenes of Barbie film, which fills up the cinemas all over the world, a legal battle is ongoing.

The “BRBY” trademark issues

Namely, Mattel – the maker of this famous doll – has objected against the application filed by the famous fashion house Burberry to the U.S. Patent and Trademark Office in July 2022 for the “BRBY” word mark. By way of explanation – while Burberry wants to register the subject trademark for use on apparel and leather goods, Mattel believes that this would cause significant damage to the company, since it is not distinctive enough in comparison to the trademark referring to their most famous product, i.e., Barbie.

In its response to the application filed by Burberry, Mattel stated that Barbie is the best-selling toy doll and one of the most recognizable brands in the world, and that the trademark that Burberry wants to register, which is very similar to Barbie trademark in terms of its appearance, sound and commercial impression, is highly likely to deceive consumers regarding the connection between these two companies and their products. This is particularly because the products that Burberry listed in its application for trademark registration directly overlap with many of the goods or services in relation to which Barbie trademark is used (e.g., on clothing).

The outcome of the respective case is still pending, i.e., it remains to be seen whether the disputed trademark will be registered despite Mattel’s efforts.

Dispute with MCA Records

However, this is not the first problem for Mattel when it comes to the famous doll.

Namely, the famous pop track “Barbie Girl”, which was released by the Danish-Norwegian group Aqua in 1997 and which topped charts worldwide for a long time, was at the time a reason for another dispute – this time between Mattel and MCA Records, Aqua’s publisher. On one hand, Mattel sued the said publisher for trademark infringement, as well as for tarnishing the reputation of the respective brand (given the lyrics and message of the song), while MCA Records sued this company for defamation.

This litigation continued until July 2002, when the court passed a decision according to which the contested track is a parody, which is therefore protected by freedom of speech, guaranteed by the First Amendment to the U.S. Constitution. This ruling (Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 906 (9th Cir. 2002)), which was later upheld by the U.S. Supreme Court, is considered particularly important in terms of the right to free speech.

However, it seems that Mattel and Aqua, i.e., MCA Records, have buried the hatchet in the meantime. Namely, MCA Records is the holder of the publishing rights regarding the track “Barbie World”, which is a part of the soundtrack from Barbie film, while members of the band Aqua (Rene Diff, Lene Nystrom, and Soren Rasted) are credited as the authors of the lyrics.

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