Barbie is one of the most well-known dolls in the world. With merchandise and film franchises, Mattel uses the BARBIE name on clothing, toys, entertainment, and other products and services around the world. Mattel has registered BARBIE as a trade mark in many countries, and regularly takes action against businesses that try to use similar names, to maintain the strength and integrity of their brand.
Recent trade mark cases in Europe, the United States, and India show how different countries assess whether another brand name is too close to BARBIE. Well-known brands such as BARBIE can often stop similar trade marks from being registered, especially when the names are closely related and used for similar products or services.
However, a famous brand does not automatically win every case. Trade mark authorities will still carefully consider how similar the names are, how consumers are likely to view them, and whether confusion is likely to occur.
European Union - EUIPO: BARBIE vs BARBERA
An Italian clothing company, Luciano Barbera S.R.L., applied to register the trade mark (pictured above) for clothing in the European Union.
Mattel opposed the application because it already owns trade mark rights for BARBIE in class 25 for the same goods.
The EU Intellectual Property Office (EUIPO) compared the two names by looking at the visual, aural, and conceptual similarity.
The office found that:
- The names start with the same four letters, "BARB", making them look and sound similar.
- However, because the endings are different, the overall visual and sound similarities were considered below average.
- Conceptually, the names were very similar because both "Barbie" and "Barbera" can be seen as versions of the name Barbara.
The applicant argued that BARBERA came from the founder's family name, but the EUIPO said reasons of internal choice would not override the perception of the consumer, and consumers were more likely to see it as another variation of the name Barbara.
A lesser degree of similarity between goods and services can be offset by a greater degree of similarity between the marks and vice versa. Because the goods covered by both trade marks were identical and the names had a high conceptual similarity, the EUIPO decided it was ‘highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark’. Therefore, Mattel's opposition was successful.
United States - USPTO: BARBIE vs BARBEE
In the United States, a company called BarBee Inc applied to register BARBEE for: ‘online social networking services accessible by means of downloadable mobile applications’. Mattel opposed the application, arguing that the name could confuse consumers or cause dilution by blurring and tarnishment of the BARBIE brand.
The USPTO set out a number of key principles when comparing trade marks in the United States:
- Goods and services do not need to be similar or even competitive, but they must be related in a way that consumers could think they come from the same source.
- Advertising on the same social media platform is not enough to show that the businesses share the same marketing channels.
- Brand fame is a factor when considering likelihood of confusion
- While fame for dilution is an either/or proposition−it either exists or does not−fame for likelihood of confusion is a matter of degree.
Despite recognising that BARBIE is a very well-known brand in the United States, the USPTO found that BARBEE would likely be seen differently by consumers. It considered "BAR" and "BEE" to be separate and distinctive words with their own meanings.
As a result, the USPTO decided there was not enough evidence that consumers would be confused or that Mattel's reputation would be diluted or tarnished. Mattel's opposition was ultimately unsuccessful. Even so, the decision confirmed the strong reputation and recognition of the BARBIE brand across the United States.
India - High Court of New Delhi: BARBIE vs BARBIE One Stop Solution for HORECA & Foods Processing
Mattel has held BARBIE trade marks in India since 1987. In 2024 they became aware of a number of trade mark applications including:
- BARBIE One Stop Solution for HORECA & Foods Processing
- BARBIE HOSPITALITY
- BARBIE CATERING
- BARBIE KITCHEN
The High Court of New Delhi held that ‘BARBIE’ is the dominant element of the applications and it is ‘visually, phonetically and conceptually identical’ to Mattel’s trade mark registrations. Although there were additional elements to the applications, the word BARBIE was seen as the key distinctive term.
The court also noted that there appeared to be no genuine reason for the applicants to use the word BARBIE. It concluded that the applicants were trying to benefit from the popularity of Mattel's famous brand and ‘create an initial interest in the mind of the consumer’.
Because BARBIE was the dominant element of the trade marks and Mattel already had registrations for the same goods, the court ruled in Mattel's favour and prevented the applications from proceeding.
What do these BARBIE cases mean for Australian and New Zealand businesses?
Mattel has held BARBIE trade mark registrations in Australia since 1961 and in New Zealand since 1962. While there have not yet been any major recent Barbie-related trade mark cases in either country, these international decisions still offer valuable lessons for brand owners in the Pacific.
The well-known reputation and longstanding nature of the Barbie name was a key consideration in all of the above cases, which highlights the value of a strong name and international trade mark portfolio.
For emerging brands, the decisions also highlight that success in trade mark disputes often depends on showing how similar the trade marks are, rather than relying solely on a brand's reputation. However, a strong reputation can strengthen claims that another business is trying to benefit unfairly from an established brand's success.
If you’re interested in exploring your branding and trade mark rights, please reach out to one of our experts.
