Why registering your trade mark is so important

- a lesson from Barbie

The new Barbie film has got most of the world talking, dressed in pink and rushing to their nearest cinemas! The iconic doll was first released on 9^th March 1959 and has made quite the comeback in 2023. Barbie is now more present in our lives than ever before and she’s got everybody talking… even lawyers!

So, how exactly did Barbie become such a recognisable and renowned doll? Perhaps it was, in part, down to the brand protection Mattel put in place by way of trade marks. Let’s face it, they knew they were on to something good, and they didn’t want anyone else to get a slice of the pie.

The BARBIE trade mark was registered in the UK in 1959, not forgetting that the colour Barbie Pink is now trade marked across more than 100 categories!

So, what is a trade mark?

A trade mark is a type of intellectual property which has a recognisable name, symbol, logo or word which is used to represent a company or product. They are used by companies to distinguish their goods or services from others and trade marks are much easier to protect if they are registered. You can establish rights in unregistered trade marks through use of the mark which gives you a right of action for passing off. However, an unregistered mark is only established through use over a period of time and is likely to be more expensive and harder to enforce.

The main functions of a registered trade mark are: -

• To establish your right in priority to others to use the mark in connection with particular categories of goods and services
• To make a commercially exploitable piece of property in itself.

And why is it so important to register a trade mark?

The BARBIE trade mark has come under dispute on a number of occasions. In February this year, Mattel won a trade mark dispute against a Chinese company who tried to register the trademark “Barbitan”. The court ruled in favour of Mattel and declared that the trade mark should not be registered.

Perhaps the most famous trade mark infringement claim made by Mattel was in 1997 against MCA records for Aqua’s song Barbie Girl. In this case, the court did acknowledge that MCA records had undoubtedly used Mattel’s trademark, however, it was deemed not to be an infringement of the trade mark. This is because court found that using Barbie in the title of the song was relevant to the underlying work, namely, the song itself, and the song was not explicitly misleading as to the source of the work as it did not suggest that it was produced by Mattel.

Most recently, in June, just days before the release of the Barbie film, Mattel filed a trade mark infringement claim against Burberry Ltd, after Burberry applied for the trade mark “BRBY” last year.

Although the outcome of the dispute with Burberry is still awaited, it shows how seriously  Mattel take protection of the BARBIE trade mark. Not only does the mark enable Mattel to take action against others, it has enabled them to licence their brand for the extensive merchandise associated with the film and their products.

Other advantages of registering a trade mark are: -

• There is a period of protection given by registration which is an initial 10 years, with the option to renew the mark for subsequent 10-year periods, without limit in time;
• The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by the use of the trade mark without his consent;
• It is easier to sue for infringement of a trade mark;
• You can register a trade mark before you start using it;
• There is a public record recording ownership of trade marks.

You too could have the same protection for your brand by registering your business’s name and/or logo as a trade mark. Failure to do so can provide an opportunity for others to copy you, and to confuse your customers about who does what, intentionally or otherwise.

It is important to note that registering a name at Companies House does not give you any protection against people using the same name as their trading name, neither does registering a domain name and establishing a website. Although use of the name may enable you to bring a claim for passing off, you can only formally protect the name through registering a trade mark.

How we can help you

Our team of lawyers can advise you on how best to protect your brand and whether it’s possible to register a trade mark and, where appropriate, advise and assist you with your trade mark application. We’ll ensure you fully understand the application and registration process, and the costs involved in it, before you commit to taking any action.

Once your trade mark is registered, we’ll help you protect it if others threaten to infringe it, and provide legal representation should you need to take further action.

Call 01242 574244 or contact us to find out how we can help with applying for or protecting your trade mark.