Trade Mark Law Case Study 2022

Running head: TRADEMARK LAW
Trademark Law
Name of the Student
Name of the University
Author Note

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Basis of the Complaint
In this case (Mattel Inc v 3894207 Canada Inc), a company named Canada Inc filed
for a trademark registration application for registering the name BARBIE’S in association
with its chain of bar and grill restaurant, serving only to adults. The manufacturing company
of Barbie dolls, Mattel objected this registration before the Registrar of trademark, even
though Canada Inc furnished enough evidences that the two trademarks are different and does
not violate each other’s business.
Arguments of both the Parties
Mattel Inc brought and Harsh opposition against Canada Inc by stating that their
world-famous Barbie trademark is being misused by the defendant as it not only creates
confusion in the place of business but also gives the idea that the Barbie doll making
company is associated with the chain of restaurant (Blanchard, Vatch & Flewelling, 2006).
The defendant argued on the basis of the nature of its business to which the trademark
BARBIE’S was going to be associated with; like, the sale of alcohol, late business hours,
adult décor, et cetera. It was also held that their design of the trademark was not in close
resemblance with that of Mattel's.
Ruling of the Federal Court and the Federal Court of Appeal
Both the federal court and the federal court of appeal dismissed Mattel’s plea of
removing the trademark BARBIE’S. The federal court dismissed the petition on account of
difference of nature of the two businesses. The federal court of appeal upheld the decision of
the federal court in rejecting the survey results produced by Mattel by stating that there was
only a possibility of confusion.
Specific Legislation

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Trademark Act 1985 is the substantial legislation that addresses the issue of confusion
between Canada Inc’s trademark BARBIE’S and Mattel's Barbie Trademark. Section 6(5) of
the Act list down the five criteria, which needs to be considered before deciding the
confusion between two trademarks, a trademark and a trade name or between a trade name
and a trademark. They are: a) the differences of the trademarks and the extent of their
popularity; b) the time duration of the usage of each of the trademarks; c) the nature the
goods or services; d) the nature of the trade; e) the extent of resemblance of the trademarks
(Ghany, 2019).
Measuring a mistaken inference
The difference of nature of the businesses associated with the two trademarks is the
main perspective from which it could be measured that dismissal of the trademark
BARBIE’S would have been a mistake inference. Barbie dolls and a restaurant named
BARBIE’S serving alcohol and open till late night are two different entities that does not
resemble with each other (Blanchard, Vatch & Flewelling, 2006). Therefore, there is no
scope of confusion between the two trademarks even though the share the same name, as they
deal in different nature of trades, one that associates children and another associate adult, as
per Section 6(5) of the Trademark Act 1985.
Protection of Trademark
It is not mandatory to register a trademark in order to be protectable however it is
recommended that trademarks should be registered before the appropriate authority in order
to receive certain benefits like nationwide protection of the trademark for 10 years in Canada,
an exclusive right to use the trademark across Canada, an outright ability to enforce
Trademark infringement in Canada, lawful right to licence Trademark rights to other
businesses in Canada. Treatment that is confusingly similar with another trademark or trade

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name could be countered before the Registrar of trademarks on the grounds of: a) outright
resemblance between the two trademarks that confuses the consumers, b) both the trademarks
are associated with businesses of similar nature operating in the same place of business, c) the
prevalence of the other trademark has significantly diminished business opportunities of the
already existing trademark, d) the prevalence of the other trademark has tarnished the
Goodwill of the already existing trademark (Ng, 2012)
Therefore, in order to protect an already existing trademark from being the victim of
confusion, businesses must take the protection of the conditions laid down under section 6(5)
of the Trademark Act, which would abstain other businesses from choosing resembling
trademarks for their businesses.

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References
Blanchard, P. D., Vatch, L. R., & Flewelling, A. P. (2006). The Barbie Case: The Supreme
Court of Canada Restates the Test for Trade-Mark Confusion. Trademark Rep., 96,
1034.
Ghany, A. (2019). Amendments to the Canadian Trademarks Act. Ct. Uncourt, 6, 16.
Mattel Inc v 3894207 Canada Inc [2006] 1 S.C.R. 772
Ng, C. W. (2012). Canadian Trademark Law. Intellectual Property Journal, 25(1), 97.
Trademark Act 1985