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Canadian Supreme Court allows third party registration of famous mark (‘Barbie’) for dissimilar goods (a restaurant chain)

On 2 June 2006, the Supreme Court of Canada handed down its
decision in Mattel, Inc. v. 3894207 Canada Inc., 2006 SCC 22.

Take home

In Canada,
the mere fame of a famous trade mark will not protect it from registration by
another company filing in respect of dissimilar goods or services. In coming to its conclusion, the Canadian
Supreme Court reiterated that this is a factual question to be assessed in
each case, and held that there was no likelihood of confusion between the
marks even though they were similar in appearance.

This obviously has important ramifications for trade mark
infringement cases involving famous marks in Canada as it clearly indicates
that the mere fact that a trade mark is famous is not enough to establish
confusion for a good or service in another class (see the text of section 20 of the Canadian Trade Marks Act).


Registrability of ‘famous’ marks for dissimilar

Registrability of a mark is determined by specific
application of the test in section
6(5) of the Canadian Trade Marks Act
which assesses:

(1) The Inherent Distinctiveness of the
Trade-marks or Trade-names and the Extent to Which They Have Become Known;

(2) The Length of Time the Trade-marks and
Trade-names Have Been in Use;

(3) The Nature of the Wares, Services or

(4) The Nature of the Trade;

(5) The Degree of Resemblance Between the
Trade-marks or Trade-names in Appearance or Sound or in the Ideas Suggested
by Them; and

(6) Other Surrounding Circumstances.

The fame of
the mark is merely a ‘surrounding circumstance’ to be taken into
account along with all of the other factors.


The dispute

proprietor of the chain of ‘Barbie’s Restaurants’ had
sought trade mark protection for ‘Barbie’s’. Mattel opposed the registration on the
grounds of likely confusion with ‘Barbie’ in respect of its doll
and related products due to their fame:

appellant opposes the respondent’s application to register its
“Barbie’s” trade-mark and a related design in
association with “restaurant services, take?out services,
catering and banquet services” on the basis that some marks are so
famous that “marks such as . . . BARBIE may not now be used in Canada
on most consumer wares and services without the average consumer being led to
infer the existence of a trade connection with the owners of these famous

The trade-marks
Opposition Board of the Canadian Intellectual Property Office had accepted
the respondent’s argument that its use of the “Barbie” name
since 1992 for its chain of Montreal restaurants was unlikely to create
confusion with the appellant’s ‘Barbie’ trade-mark.
The Board held that ‘Barbie’s’ fame was restricted to dolls
and accessories for them.

The Federal
Court, the Federal Court of Appeal and now the Supreme Court have upheld the
Board’s decision.

Click here for the
IPKat’s comments.

See the CTV’s news item“The owner of the restaurant, Spiro Christopolous, said he used the name
Barbie because he wanted to combine the words bar and barbecue.”

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