I AM BARBIE GIRL, I’M LIVIN’ IN MY IP WORLD – You Can’t Touch Me There Or Else Hallway Go Down To Courtroom

The sky has turned pink with the release of the ‘Barbie Movie’ starring Margot Robbie and Ryan Gosling and everyone is humming:

“I’m a Barbie girl, in the Barbie world
Life in plastic, it’s fantastic”

Well, its certainly not fantastic for Burberry Limited, the prestigious British luxury fashion brand as Mattel, (creator of Barbie dolls) has filed an opposition against a trademark application filed by Burberry at USPTO.

As we all are aware that Burberry is a tour de force in the world of fashion since 1856. Recently, as a part of its brand extension and development strategy, Burberry Limited in July 2022 has filed a Trademark application for the mark “BRBY” bearing US Serial Number 97512109 for goods of Class 18 i.e., Leather and imitations of leather; animal skins, and hides; luggage and carrying bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; collars, leashes and clothing for animals and Class 25 i.e. Clothing, footwear, headwear.

MATTEL, INC. on 26th June 2023 filed an Opposition against the registration of the subject Trademark on the grounds that the subject mark is deceptively confusing and conceptually and structurally identical to the prior adopted and prior used Trademark “BARBIE” bearing US Serial Number 88211001. Mattel further claimed that phonetics identicality due to the lack of vowels guiding the pronunciation between both the marks will lead to obvious confusion in the market and the consumers would view “BRBY” as an abbreviation or expansion of the Barbie trademark.

It is significant to note that “Barbie” as a brand holds immense importance and exudes remarkable power in the world of consumer products. The brand’s influence extends beyond its iconic dolls, encompassing a wide range of merchandise, media content, and collaborations. Even the Barbie pink hue color has gained distinctiveness over the years and association with Barbie. The brand has created its legacy spanning several decades and certainty a VERY WELL-KNOWN TRADEMARK!

The opposition against Burberry holds significant importance, especially in light of the release of the most buzzed blockbuster ‘Barbie movie’. Mattel in its Opposition highlighted that the “Barbie” trademark extends beyond the realm of dolls, encompassing diverse industries such as fashion, jewelry, cosmetics, and the eagerly awaited live-action Barbie movie. These arguments underscore the enduring value and broad recognition of the Barbie brand.

Mattel has always been very protective of its Intellectual Property Rights. In past, Mattel filed a lawsuit alleging the popular RAP snack brand infringed its “Barbie” trademark over a Nicki Minaj branded “Barbie-Que Honey Truffle” potato chips. A packaging of the said infringing label is produced herewith:

Before that, in 1997 Mattel sued MCA Records, Aqua’s American record label for the song “Barbie Girl”. The suit was dismissed ultimately by the US Court. However, the exciting part is that this song is now making a comeback with the “Barbie Movie”. Looks like Mattel also dismissed its hatred against the song ultimately.

Everything seems to be drenched in “Barbie pink” at the moment. The list of collaborations for all sorts of goods for kids and adults with brands like ALDO, Crocs, and NYX Cosmetics, etc. have been circumnavigated with IP laws crafted to protect Mattel’s IP rights to the Barbie brand.

The Opposition against Burberry Limited by Mattel has proved that Mattel is making plans for a ‘Mattel Universe’ style assault on the entertainment landscape post the release of its most hyped Barbie Movie but we can also not deny the fact that Burberry’s clothing is so well-known that consumers would clearly recognize the abbreviated Trademark “ ” to be associate with the Burberry.

It would be interesting to see it this dispute between two well-known giants get resolved with guidelines on how the trademark can be used or keep hanging in the courtroom hallway roasting each other and slayyy!!

About Swagita Pandey Tewari 15 Articles
Swagita is a young professional intrigued by and interested in the fields of IPR and Entertainment laws. She is very adept at Intellectual Property Laws specially the Trademarks. Currently, she is working with a leading Law Firm based in New Delhi. She completed her Bachelor of Laws – B. Com LL.B. (Hons.) from UPES in the year 2020. She spent most of her time working round the clock on trademark cases for various clients. She loves networking, debating, and communicating – this probably isn't surprising coming from a lawyer. In her leisure time she prefers to Think–Pair–Share with budding lawyers or just Netflix & Chill.She graduated in B. Com LL.B. (Hons.) from the School of Law, UPES, Dehradun. She is very adept at Trademark laws. Her straightforward, easy to deal with and forward-looking view makes her leader at heart and a winner in spirit.

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