Introduction

“The Barbie movie is finally here!” is a sentence we did not ever think we’d hear anyone say. And yet, the hype has gotten to us all. With Margot Robbie, Ryan Gosling and Simu Liu starring in the movie, we are sold.

Along with a surge in Mattel’s (the company that owns the Barbie brand) stock prices, another interesting piece of IP news as arisen from the highly anticipated release of the movie.

Burberry, the luxury fashion brand from Britain, recently applied for a trade mark in the US and it was opposed by Mattel. The trade mark in question is “BRBY” and Mattel is contending that it is too similar to their “Barbie” trade mark and will sow confusion amongst the public, causing damage and dilution to the Barbie brand.

Mattel pointed out that Barbie is the “world’s best-selling toy doll” and that since 1960, “600 million Barbie dolls have been sold, one every two seconds”. Mattel claims that Burberry’s “BRBY” mark is phonetically and visually too similar to “Barbie” and has accused Burberry of intentionally choosing “BRBY” so that consumers would associate Burberry products with the Barbie brand.

The actual case is still ongoing in the US (Mattel Inc v. Burberry Ltd, Trademark Trial and Appeal Board, Opposition No. 91285723) so we will refrain from commenting on that, but we thought that we would give our two cents about the outcome if it were litigated (hypothetically) in Singapore.

 

What If the case was litigated in Singapore

Mattel would likely make their case here based on Section 8(2)(b) of the Trade Marks Act, which reads: “A trade mark must not be registered if, it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, [and] there exists a likelihood of confusion on the part of the public”.

The approach adopted in Singapore in relation to an objection under section 8(2) of the Trade Marks Act is known as the step-by-step approach, and has been endorsed by the Singaporean Court of Appeal. There are 3 elements to the approach, and they must be assessed sequentially. Notably, each element must be satisfied, before moving on to the next. The 3 elements are: (1) Similarity of the Marks; (2) Similarity of Goods/Services; and (3) Likelihood of Confusion.

 

Similarity of Marks

There are 3 components that must be examined to determine similarity of marks – visual, aural and conceptual. Here, the marks are “BARBIE” and “BRBY”, and we will take you through each of the components.

 

Visual Similarity

In our opinion, it is hard to say that the marks are visually similar. While both marks start with the letter “B”, and contain “RB” somewhere in the letter chain. “BARBIE” is 6 letters long while “BRBY” is 4 letters long. More importantly, the “-IE” from “BARBIE” is visually different from the “Y” in “BRBY”, which, to us, stands out as a distinctive element. For these reasons, we think that, on a balance, the marks are more visually dissimilar than similar.

 

Aural Similarity

In our opinion, the marks are not aurally similar. In Singapore, “BARBIE” would likely be pronounced “BAR-BEE”, while “BRBY” would likely be pronounced “BUR-BEE” or even “BUR-BY”. Therefore, Mattel’s argument that the marks are “phonetically identical” might be untrue in Singapore. The litmus test would be how the average Singaporean would pronounce “BRBY”. On a balance, we think that the marks are aurally dissimilar.

 

Conceptual Similarity

As neither word actually means anything beyond the brand that they signify, we think that the conceptual similarity point is a wash.

 

Overall Similarity

Overall, we do not think that the marks are similar, which means that the marks-similarity inquiry would end here (as the first element was not satisfied). That said, we will continue with the analysis for academic purposes.

 

Similarity of Goods/Services

In Singapore, Mattel owns “BARBIE” trade marks that cover, inter alia, “clothing, footwear and headgear” in Class 25 and “backpacks and purses” in Class 18. Presumably, Burberry would wish to register “BRBY” in these classes and in respect of similar goods. Hence, it is likely that the goods/services would be similar.

 

Likelihood of Confusion

Ultimately, we do not believe that the relevant public would be confused. There are a variety of factors that can be taken into consideration at this stage, but we believe that these 2 are the most important for the purposes of this hypothetical: (1) The immense reputation of the Barbie brand and (2) the expensive nature of Burberry goods in general.

Given the sheer notoriety of the Barbie mark, there is a low chance that consumers would mistake anything other than Barbie for Barbie. The Barbie brand’s immense reputation works against it in this situation because it has garnered such a huge following that the average consumer would be unlikely to be confused by and/or associate BRBY with Barbie.

Burberry products tend to be on the pricier side, meaning that the average consumer would be more discerning when making that purchase. The purchase of an expensive item would point away from a likelihood of confusion due to the greater care that the average consumer would exercise in making such a purchase.

 

Potential Well-Known Mark Argument

There is also the possibility that Mattel opposes the registration of “BRBY” on the grounds that “BARBIE” is a well-known trade mark, and allowing the registration would cause dilution in an unfair manner of the Barbie brand: Section 8(4) of the Trade Marks Act.

Mattel would first need to prove that Barbie is well-known to the public at large in Singapore. While this is no mean feat, it is likely that they will be able to do so, given the popularity of the doll.

Next Mattel would need to prove that there was dilution in an unfair manner of its mark. In other words, they would need to prove that allowing BRBY to be registered would lessen the capacity of the Barbie mark to identify and distinguish its goods or services, in an unfair manner. We doubt that any dilution would occur given the sheer strength of the Barbie brand, but even if it did, it seems doubtful that Burberry is trying to take “unfair advantage” of Barbie by free-riding on its reputation because “BRBY” is, in fact, the Stock Market shorthand for Burberry.

 

Conclusion

It remains to be seen whether “BRBY” will be allowed registration in the US and whether this conflict goes global, but we shall endeavour to keep you guys apprised of any developments. In the meantime, if you have any trade mark or IP concerns in Singapore, feel free to reach out to us.

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Disclaimer

This article does not constitute legal advice or a legal opinion on any matter discussed and, accordingly, it should not be relied upon. It should not be regarded as a comprehensive statement of the law and practice in this area. That.Legal LLC represents neither party in this dispute and is not privy to any confidential information pertaining to the parties. All facts stated herein are compiled from publicly available sources. If you require any advice or information, please speak to a practicing lawyer in your jurisdiction. No individual who is a member, partner, shareholder or consultant of, in or to any constituent part of That.Legal LLC accepts or assumes responsibility, or has any liability, to any person in respect of this article.