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The recent release of Barbie (2023) has generated significant discussion about Mattel and how it has used its intellectual property (IP) rights to expand Barbie merchandising. This article will use Mattel’s successful IP decision-making to explore how trade marks can be registered, enforced and shared.
Context
The Barbie doll was based on a German ‘Bild Lilli’ doll that the Mattel founders had seen when travelling to Europe. Bringing three Bild Lilli dolls home to the United States, the Mattel founders revamped and launched them as ‘Barbie’ dolls in 1959. They sold 351,000 dolls in their first year.
The original Bild Lilli creators, Greiner & Hausser (G&H), and toy manufacturer Louise Marx & Co., then brought a claim against Mattel. The dispute was eventually resolved by settlement, where all IP rights owned by G&H were sold to Mattel in 1963. Currently, the net worth of Mattel is estimated to be approximately $11.971 billion AUD. Mattel’s growth and modern success show the importance of properly understanding IP protection to maximise the value of your business.
Trade Marks
Barbie is a trade mark under Mattel. A trade mark protects your brand by giving you exclusive rights. This prevents competitors from using a similar mark for a alike good or service. Examples of trade marks include:
- logos;
- sounds;
- colours;
- words;
- names; or
- scents.
Companies may have multiple registrations for the same trade mark because trade marks are also organised by class. There are 45 total classes for different types of goods and services. You must carefully note every class your trade mark will cover when filing an application to ensure adequate protection. To receive protection in new classes, you need to submit another trade mark application with the additional classes selected.
Accruing registrations over time is a useful way of expanding trade mark protection and supporting brand growth. Barbie, as a trade mark under Mattel, is a clear example of this. Currently, Mattel owns 24 Australian trade mark registrations for the word ‘BARBIE’, with the most recent registration filed in 2021. Some of the classes covered by the ‘BARBIE’ trade mark are:
- clothing;
- baby food;
- business management;
- story and picture books;
- software;
- jewellery; and
- education
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Enforcement
When consumers can widely recognise your brand, other businesses may attempt to use your trade mark or a similar sign to promote their own products. As such, it is important you are aware of the different avenues you can take to enforce your trade mark.
A cease and desist letter will alert a business of your IP rights and their alleged infringement. It will often outline your trade mark ownership details, what infringement has occurred and that the infringement may be addressed in court if necessary. Since these letters only notify, they are often a cost-effective first step that protects your brand whilst minimising legal disputes. Mattel has successfully used this method to enforce its rights in Australia. In Sydney, a bar attempting to sell a pink ‘Barbie Dreamburg’ burger received a cease and desist letter from Mattel’s lawyers. The bar has since renamed the burger to ‘Barb’s Burger’.
Likewise, in 2019, a Newcastle party bus company had to pay $4,000 in damages to Mattel after they used a Barbie logo for their Barbie Party Bus.
You may also want to engage with a trade mark professional, who can help you draft a cease and desist letter and provide you with alternate pathways to enforcing your trademark.
Collaborations
You can grow your brand with a registered trade mark through licensing agreements, which other businesses to use your IP to manufacture, market or sell a good/service. You do not lose ownership when you license your IP, meaning that you can set the terms of a licensing agreement.
Working with other established companies via licensing agreements can be a valuable marketing tool as it builds your brand reputation and reach. Upon the release of the Barbie movie in 2023, Mattel collaborated with Glasshouse Fragrances to release a custom candle that featured hallmarks of the Barbie brand, such as a pink jar and the Barbie logo.
The timing of a collaboration is also critical. Mattel’s lawyers are said to have worked tirelessly to line up the fragrance collaboration with the release of the movie. If you are considering approaching a business or individual to collaborate, keep timing in mind and exploit trends in the market.
Key Takeaways
Barbie is a clear example of how knowing and securing your IP is critical to your business. In addition to registering for trade marks and enforcing your IP rights, licensing and collaborating are valuable to expanding your brand.
If you would like assistance regarding business growth via IP protection, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
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