Barbie tackles copycat

Mattel has been a producer of the Barbie fashion doll for over 60 years. When Jieyang Defa Industry applies for design protection in the European Union for a comparable doll's head, Mattel starts an invalidity proceeding against the application.

 

A design can only be protected if it is novel and has its own distinctive character. This model lacks such character (does not leave a different general impression) given Barbie CEO doll from 2008.

The case eventually goes to Court. A designer can shape a doll in many ways. The only limitation is that it ought to be a human figure. The registered community design features the same light skin tone, oval-shaped face, curvy brown eyebrows, blue eyes, black eyelashes, thin lips with a small smile, delicate nose and the same facial expression.

There are a few differences, such as the slightly different shape of the (bald) skull. In normal use, the head is placed on a doll's body and the doll is given a wig. The mentioned differences disappear.

The remaining minor differences are insufficient to yield a different overall impression. As a result, the design does indeed lack its own distinctive character. The requested design is deemed invalid.

design-law



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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?