Merchandising has come a long way from the days when “marks” were carved on silver goblets or earthenware jugs to identify the wares produced by a certain silversmith or potter. Their traditional role was to create a link in the prospective buyer’s mind between the product and the producer. The power of attraction of trade-marks and other “famous brand names” is now recognized as among the most valuable of business assets. However, whatever their commercial evolution, the legal purpose of trade-marks continues (in terms of s. 2 of the Trade-marks Act, R.S.C. 1985, c. T-13 ) to be their use by the owner “to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others”. It is a guarantee of origin and inferentially, an assurance to the consumer that the quality will be what he or she has come to associate with a particular trade-mark (as in the case of the mythical “Maytag” repairman).
The BARBIE doll is said by the manufacturer, Mattel Inc. to be an iconic figure of pop culture. And so, within limits, it is. The sale of various BARBIE products annually exceeds $1.4 billion worldwide, representing 35 percent of the appellant’s sales. The appellant advises that Canadian girls aged 3 to 11 years are given an average of two BARBIE dolls per year. Mattel was recently advised that a company is seeking to register trade-marks in connection with its small chain of Montreal suburban “Barbie’s” restaurants. Mattel feels the use of the name (albeit in relation to different wares and services) would likely create confusion in the marketplace. On a casual acquaintance with both marks, it is contended, there is a likelihood that consumers would think that the doll people had something to do with a restaurant called “Barbie’s”. Or, as Mattel framed its point in a consumer survey by asking the following question “Do you believe that the company that makes Barbie dolls might have anything to do with the restaurant identified by this sign or logo?” (Emphasis added.)
The matter proceeds to Court. How do you think a court would rule on the issue?
