From innumerable Barbie related fashion collections, to roller skates and a Google tie-in (at the time of writing this article, pop up pink sparkles and a pink theme are applied to one's browser when searching for "Barbie movie"), there is no doubt that Mattel's licensing team have been hard at work in the lead up to this film.
As any good lawyer would advise their clients, it is important to ensure that you own the rights to what you are intending to licence. In the context of branding, the critical intellectual property asset to hold, is a registered trade mark.
Barbie® word mark registrations cover a wide field
A quick search of the Australian Trade Mark Register maintained by IP Australia reveals that Mattel Inc. holds 30 separate registrations for the word mark "Barbie" in connection with a wide variety of goods and services.
The most recent registration (TM Number: 2238479), filed on 22 December 2021 is for the following services:
Services for providing drink; Temporary accommodation; Hotels; Coffee Shops; Juice Bar; Day Care Centres; Holiday Camp Services; Rental of chairs, tables, table linen, glassware; Providing Camping Facilities; Boarding for Animals; Retirement Homes; the above all excluding services related to foods cooked on a barbeque or the provision of barbeque facilities.
Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, aquaculture, horticulture and forestry services; Hair salons; Tanning services; Manicure services; Health Spa Services for health and wellness of the body and spirit incorporating massage, facial and body treatment services and cosmetic body care services; Mental Health Services Hospitals; Plastic Surgery.
Mattel’s strategy with respect to this latest registration appears to be an attempt to cover the field and register the mark with respect to as many services within Classes 43 and 44 as possible. While this approach may deter third parties from seeking to use or apply for a mark in respect of “aquaculture” for example – such a strategy can also expose the registration to vulnerabilities. If an applicant has no intention to use the mark with respect to a particular class of goods or services at the time the mark was applied for, then this would provide a basis for a third party (an “aggrieved person”) to seek to cancel the registration in respect of those goods or services (pursuant to section 88 of the Trade Marks Act 1995 (Cth)). Similarly, if a trade mark is not used by the owner or its authorised users in Australia for period of three years in relation to the registered goods or services, the trade mark could be the subject of a non-use application pursuant to Part 9 of the Trade Marks Act 1995 (Cth).
The exclusion of services related to “foods cooked on a barbeque” (or “barbie”) also reveals the impact that local colloquial terms or phrases may have when seeking trade mark registrations in particular jurisdictions, and the importance of seeking local advice as part of any global trade mark strategy.
As an alternative to covering the field and potentially incorporating services that it did not intend to use in its application, Mattel could have potentially sought to make an application for a defensive Barbie trade mark. The defensive mark regime under the Trade Marks Act provides an avenue for owners of marks that have been extensively used in relation to the goods or services for which they have been registered to be obtained in relation to other goods or services, where it is likely that the use of the mark indicates a connection between the new goods and services and the registered trade mark owner. Defensive marks do not require an intention to use the mark, and not vulnerable to non-use applications. The application process for a defensive mark is more intensive than an application for an ordinary registration as it requires evidence in support, demonstrating the extent of the use of the registered mark and why potential consumers are likely to infer a connection with the applicant when the trade mark is used on different goods or services and the nature of that likely connection. As noted by the Trade Marks Manual: “Mere assertion is not a substitute for a convincing declaratory explanation of the applicant's case.”
Ken® - the relatively limited scope of the Ken trade marks
By way of contrast to the numerous Barbie trade marks, despite the "Ken-ergy" advanced by Ryan Gosling in promoting the film, Mattel, Inc. only holds three registrations in Australia for the word "Ken". Those registrations are as follows:
- TM number 174233, filed 18 June 1962, Class 28 (Toys excluding playing cards of all kinds),
- TM number 263952, filed 29 November 1972, Class 16 (All good included in Class 16, excluding playing cards of all kinds), and
- TM number 269646, filed 26 June 1973, Class 28 (All goods included in this class excluding playing cards of all kinds).
The Ken marks registered in the 1970s reflect an approach to registration that is no longer permissible under reg 4.4(2) of the Trade Marks Regulations 1995 (Cth), which provides that:
The expression ‘all goods’, ‘all services’, ‘all other goods’, or ‘all other services’ must not be used in an application for registration of a trade mark to specify the goods and/or services in respect of which registration is sought.
Based on the registration strategy, and the relatively limited scope of the Ken trade marks in comparison to the Barbie trade marks, it could be inferred that Mattel is not intending to further develop or monetise the Ken brand by expanding into the same array of goods and services bearing Barbie mark at this time. For now, it seems, that Barbie’s long-term boyfriend simply remains, “just Ken”.
MinterEllison’s intellectual property lawyers are on hand to help protect your most important assets – your business brand and reputation.
Our specialist advisers can support your business from advertising and brand promotion strategies and legal risk assessment of marketing offers, product performance claims and sponsorships, to strategic re-branding, ambush marketing and marketing and brand-related dispute resolution and large-scale litigation.
