The Supreme Court of Canada recognised the same day that Les
Boutiques Cliquot, a women's clothing chain, had nothing to do with
the famous Veuve Cliquot Champagne in a second case.
The question in both disputes was whether well-known trade marks
should be allowed to be used by others to sell goods or services in
unrelated industries. Mattel was opposing a small Montreal
restaurant chain's application to register its 'Barbie's' trade
mark in association with “restaurant services, take‑out services,
catering and banquet services.” But Mattel failed to show
convincing evidence of consumer confusion.
Fame does not provide absolute protection for a trade mark,
concluded the court. It is one factor to be considered with all the
others. And as long as there is a difference between the parties'
wares or services, consumers and channels of trade, there is no
infringement on a well-known mark.
"No doubt some famous brands possess protean power," wrote
Justice Ian Binnie. It had been suggested in court that the Virgin
brand "knows virtually no bounds" – though the judges refrained
from expressing an opinion on that. Instead, the court concluded
that "Barbie's aura" could transcend dolls and dolls' accessories
but that, in the case before it, there was "no likelihood of
confusion in the marketplace" having regard to all the surrounding
circumstances.
Lee Curtis, a trade mark attorney with Pinsent Masons, the law
firm behind OUT-LAW.COM, said: "Although Mattel was defeated in
this particular case, the owners of famous brands do at least now
know that the Canadian courts may in the future prevent the use of
famous trade marks in fields unconnected to the owners products, if
such use causes confusion in the marketplace."
In Europe, famous trade marks have been afforded such protection
for many years. Providing a trade mark owner can prove that his
trade mark is 'reputable' and the use of the defendant's trade mark
takes unfair advantage of, and is detrimental to the distinctive
character of the proprietor's famous mark, then a court will
prevent the use of the later mark.
"The problem is always proving that your trade mark is so well
known that it is 'reputable' and that the public are in some way
associating the defendant's mark with your mark and that such use
is damaging the 'distinctive character' of your brand," said
Curtis.
