Barbie mania has hit us this year with the release of Barbie’s first ever live action, full feature film. Grossing over $1 billion worldwide (and counting!) it’s no wonder everyone’s talking about it. The marketing and branding campaign for the new Barbie movie has reinforced the “Barbie Pink” colour as being synonymous with the Barbie brand. Barbie Pink is best described as Pantone 219C – a distinctive bold, bright pink colour – and as Mattel’s president and chief operating officer Richard Dickson stated recently, “there is not a corner of the globe that hasn’t turned [Barbie] pink.”
It’s important to note that Mattel doesn’t own any stand alone trade marked colours for its Barbie brand but this doesn’t stop Mattel from being diligent in defending its pink brand. Some brands such as Tiffany & Co.
The Fashion Law recently published an article on the distinctiveness of Mattel using Barbie Pink over the years;
“Trade mark lawyer and Suffolk Law IP Clinic Director Rachael Dickson stated that the Barbie pink hue as used on doll packaging “has gained distinctiveness over the years.” Such secondary meaning bodes well from a trademark perspective given that a single color (as distinct from certain multi-color marks) may function and be protected as a trademark as long as it has acquired distinctiveness.” You can read that article here.
When applying for a trade mark that has colours in it (or to trade mark the colour itself) the “Pantone Colour Chart” is often referred to as this is a worldwide universal scale for distinguishing colours.
Remember that IP Australia defines trade marking a colour as; “A colour, by itself or in combination with other colours and/or any of the other features which fall within the definition of a sign, may be used as a trade mark.” Single colour trade marks are much harder to receive approval for than a combination of colours within a trademark.
Check out the Pantone Colour chart here.
The IP History of the Barbie Doll
Let’s go back to where it all began. Did you know that Barbie was originally based off a “sex doll”?
The Bild Lilli doll of 1950s Germany has been described as a “sex doll” or “sex toy” that men gave to their mistresses rather than their kids and truckers placed on their dashboards.
According to ABC News; “originally she was a cartoon character in a newspaper called Bild-Zeitung, and then got turned into this doll called Lilli, that was available in German-speaking Europe.”
Ruth Handler, who originally created Barbie, was travelling through Europe in the ’50s when she discovered the doll and “reengineered” her. Mattel was then later sued by Greiner & Hausser for copying their Bild Lilli doll. Mattel and Greiner & Hausser settled their lawsuits out of court in 1963 with Mattel buying up all the copyright & patent rights to Bild Lilli.
Barbie Trade Mark Disputes
In 1997, Mattel famously sued music label MCA Records, for its band Aqua’s song Barbie Girl.
It accused Aqua of ‘trade mark infringement, unfair competition and trademark dilution’, with Mattel taking exception to the use of lyrics including ‘kiss me here’ and ‘touch me there’, saying they were damaging to Barbie’s reputation. Using the brand’s trade mark pink colour for mimicry of Barbie’s accessories was also cited in the suit. The court sided with MCA Records with Judge Alex Kozinski later closing his opinion with the famous line ‘the parties are advised to chill’. Check out more on this court case here.
More recently, Mattel has sued British fashion house Burberry over their proposed vowelless logo: BRBY
Mattel says the monicker would cause confusion with Barbie since it is “visually similar” and “phonetically identical”.
In Opposition No. 91285723 submitted to the US Trademark Trial and Appeal Board, it says a BRBY mark on clothing, bags and other products would dilute its brand and mislead consumers into thinking it was a “subset or expansion” of Barbie, which appears on clothing, jewellery and cosmetics as well as the dolls.
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