We’re in a Barbie world – Barbie v Burberry and the importance of brand protection

In our latest article, Carly Duckett and Yaser Razouk examine the details of the ongoing trade mark dispute between Mattel, the company that owns the Barbie brand, and British fashion house Burberry.

4 August 2023

Last weekend we saw the biggest opening weekend for a female film director in history with the release of Greta Gerwig’s Barbie.

Behind the scenes, a trade mark dispute has been brewing between Mattel, the company that owns the Barbie brand, and British fashion house Burberry.

Burberry successfully registered its "BRBY" mark in the UK in April 2022, when Barbie filming was underway in England, but when Burberry recently tried to register the same ‘BRBY’ mark in the US, Mattel opposed it.

Mattel opposes the registration on the basis that there is an alleged likelihood of confusion between ‘Barbie’ and ‘BRBY’ due to their visual and aural similarity. Their position is that the potential for confusion is heightened because the proposed registration would cover goods listed by Burberry under US trade mark classes 18 and 25, which includes “leather products” and “clothing, footwear, headwear,” (respectively). Mattel’s view is that this directly overlaps with its Barbie-branded products.

As the UK mark was successfully registered last year, the timing of the dispute in the US has given rise to speculation about its legitimacy – could it be a marketing ploy?

Additional press due to legal controversy is amplifying Barbie’s exposure, as it has done for many brands and individuals in the past, but Mattel could be seeking to leverage Barbie’s brand presence, which is at a high following the release of the film, to expand its reach beyond the industry it has traditionally been associated with.

Barbie has been associated with the toy industry since the doll was launched at the American International Toy Fair in 1959 and, while Barbie-branded products have been in circulation for some time, the Barbie logo is now on clothes sold by retailers across the market, as well as on hair accessories, serve-ware, soft furnishings and roller skates, to name a few.

Commercialising its assets while its brand presence transcends the toy market could be an effective growth strategy for Mattel and Barbie. Mattel reportedly suffered a 21% drop in net product sales in Q1 2023. The prevalence of the Barbie brand throughout highstreets and online retailers around the world suggests Mattel shouldn’t find itself in that position by the end of Q3.

Even if its opposition to the BRBY mark is a marketing ploy as some commentators have suggested, protecting its brand by monitoring and opposing similar trade mark registrations will be important for Mattel’s long-term success, and taking steps to protect its intellectual property when brands across the world will be trying to take a piece of the Barbie pink cake can be no bad thing.

If you need advice on brand protection please get in touch with Carly Duckett or another member of our Intellectual Property Disputes team.