So here we have a major toy corporation Mattel (MAT.O) suing a luxury clothing brand Burberry (BRBY.L) over a new proposed mark BRBY that allegedly has the potential to create a phonetical confusion with BARBIE.
From the outset, BARBIE appears a questionable trademark because it is an ordinary human name. Millions of people could be named Barbie, run their own businesses under Barbie and there is nothing Mattel can do about it. As a toy however, Barbie is hyper distinctive and unequivocally a unique trade name. So if I made a toy named BRBY, then Mattel would have a claim against me. Right now, I don’t think they have a case.
The Barbie brand is obviously iconic as a toy. The name Burberry sounds like a clothing designer’s surname, as a signature on each design, in that respect providing a better justification for trademark registration. But Burberry is listed as (BRBY.L) on the London stock exchange. That could be read as a distinctive feature and simply an abbreviation of the full designer name (a trend in the fashion world).
On a first sight, literally ALL four letters in BRBY are contained in the original brand name Burberry. I actually did that to my own name at the beginning of May, and if someone comes and tells me I can’t do that because my new name sounds like their brand, it is still a variation of a living individual’s name.
The letter Y in BRBY is not contained in the name Barbie. Although the letter Y often sounds like the letter I or the combination IE, BRBY also sounds like Barbie. So, the alleged confusion could affect consumers who rarely read text or rather prefer to consume text in the form of sound. If that’s the majority of consumers, I can see how the confusion could set in. However, there is the criterion of goodwill which is not met.
Mattel said it uses its world-recognized “Barbie” mark in many fields outside of the popular dolls it introduced in 1959. It cited federal trademarks for products including clothing, jewelry and cosmetics, as well as a highly-publicized live-action Barbie movie opening next month.
Sure, but it is safe to say that currently there are hundreds if not thousands of OTHER Barbie trade names outside the realm of the toy industry. The Barbie name is not recognized in the same way in clothing, jewelry and cosmetics, if not for the merchandising associated with the Barbie toys and paraphernalia. From a non-toy perspective, Barbie hasn’t got much of a chance against literally any Barbara in the world who is doing business under her name in terms of fashion, music (Nicki Minaj is more Barbie than Barbie at times). Barbie is not a distinctive brand in cosmetics or movies. The first ever Barbie movie is yet to come out, so that’s hardly evidence. It’s more marketing than proof of distinctiveness.