A recent French judgement provides another occasion to wonder whether the portrait of a famous character can fulfil the function of a trade mark.
In a previous case, it was held that the famous Che Guevara's portrait by Korda would not be perceived by consumers "as a sign which designates the origin of the products and services [for which a trade mark consisting of this picture was registered] but as a political or artistic reference to the work of Korda which magnifies Che Guevara".
The character depicted in the present case is the 50-year old Barbara Millicent Roberts, best known by little girls (and their parents) as Barbie.
Mattel had filed a suite against the manufacturer and seller of a toy resembling its Barbie doll. The Barbie (and more precisely the "Barbie CEO") doll figure was registered at the US Copyright Office in 1999. The French judges held such protection as valid and, considering the resemblances between the toys at stake, condemned the defenders for copyright infringement (Paris first instance civil court, 30 April 2009, PIBD 902 III page 1322).
But what is more interesting for us is that Mattel also invoked its community trade mark 3973252, registered in classes 16, 18, 21, 25, and in class 28 for, inter alia, " games and playthings". This trade mark consists in a picture of the head of Mattel's Barbie doll (as shown above). Not explicitly cited in the decision, article 7.1.b of the CTM Regulation, appears as having led the court to decide that:
it should be sought whether consumers apprehend the device as a guarantee of origin, allowing to distinguish the product [bearing the trade mark] of those of competitors, and not only as the appearance of the product and the image that would spontaneously come to mind to evoke a fashion doll.
In the present case, Mattel does not put forward any element that would be perceived by consumers not in as decorative and aesthetic function, but as a distinctive function. [Mattel] does not claim acquired distinctiveness by use.
As a consequence, the distinctive character of the doll's face to identify the origin of a doll is not established and the community trade mark must be cancelled for dolls.
History repeats itself. After such fate for the Che and "Barbie CEO" heads in French courts, one would advise Barbie "Marie-Antoinette" to avoid the revolutionary spirit floating in French courts.