Barbie goes for the plaid

World-wide exposure for the Barbie movie has seen a rash of pink excitement in unexpected quarters, but one design house that may have hoped to escape such attention is the international Burberry brand, which is facing opposition from Barbie owner Mattel to a trademark registration in the US.

Burberry filed the application for the word ‘BRBY’ to cover a range of leather goods, bags and clothing but Mattel has opposed the application, saying it is too similar to their mark, even though the BRBY trademark was successfully registered in the UK by Burberry last year.

It may seem a surprise, bearing in mind Burberry is best known for its rather staid brown plaid which is a world apart from the dazzling pink favoured by Barbie.  As it says on its website:  ‘The Burberry check was first used to line our raincoats in the 1920s, but it was the 1960s that saw it become the unmistakable Burberry signature we know’.

But the opposition is on the grounds that the word BRBY is similar to Mattel’s registered marks and could damage its reputation, with the biggest similarity being phonetic, as vowel-light BRBY sounds very similar to ‘Barbie’ when spoken.

While Mattel is known for producing toys, specifically the Barbie range, the doll’s extensive wardrobe may be entering the real world, as Margot Robbie did in the film, with claims of a direct overlap in terms of goods and services listed in the opposition to Burberry’s application.

Since it was launched in 1959 there have been many Barbie-branded products, but mainly within the toy sector.  With the launch of this year’s film, the brand is evident in many new directions, from fashion and cosmetics to homeware.

“When big name brands are involved, there’s everything to fight for in such situations,”

said commercial advisor Miss Amy Cusworth  of Rotherham town solicitors Oxley & Coward Solicitors LLP. “Mattel will be looking to leverage the brand as widely as possible on the back of the mega-success of the film, so it’s not surprising to see this push back against Burberry, as the Barbie world is likely to expand dramatically over the coming year.”

[This is not legal advice; it is intended to provide information of general interest about current legal issues].

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