The Winnipeg Sun today reports that Mattel Inc. is in a legal tangle over the BARBIE trademark and that it is battling a Canadian restaurateur over the applied for mark BARBIE’S & Design - even though the latter refers to the restaurant’s barbecued food.
Thus far, the Trade-Marks Opposition Board dismissed Mattel’s opposition, the Federal Court dismissed their appeal and the Federal Court of Appeal likewise dismissed the subsequent appeal. It is now going to the Supreme Court of Canada.
According to Eugene Meehan’s L@wletter, also of today, the Supreme Court of Canada recently granted leave to Appeal and the case is to be heard on October 18, 2005.
Meehan notes that the issues before the SCC include the following:
- did the Court of Appeal properly assess the scope of protection afforded to famous trade-marks;
- did the Court of Appeal grant adequate protection to the Applicant’s trademarks;
- did the Court of Appeal disregard the definition of confusion in section 6(2) of the Trade-marks Act;
- did the lower courts misdirect themselves on the issue of confusion;
- did the lower courts consider irrelevant circumstances by looking at the actual nature of the wares and services offered by the parties, or should they have confined their consideration of the nature of the Respondent’s services to its trade-mark application; and
- did the courts below mistakenly assess the likelihood of confusion as if this were an infringement action rather than a trade-mark opposition proceeding.
On a side note, last year, a Calgary, Canada woman named Barbie Anderson announced that she was giving up her fight with the toy giant over her website address www.barbiesshop.com, citing legal costs as the major factor.