Mattel, Inc. v. 3894207 Canada Inc.

Mattel, Inc. v. 3894207 Canada Inc.
Supreme Court of Canada
Hearing: October 18, 2005 Judgment: June 2, 2006
Full case name: Mattel, Inc. v. 3894207 Canada Inc. Citations: 2006 SCC 22, [2006] 1 S.C.R. 772 Docket No.: 30839 History: Appealed from the Federal Court of Appeal Ruling: Mattel appeal dismissed
Court membership
Chief Justice: Beverley McLachlin Puisne Justices: John C. Major, Michel Bastarache, Ian Binnie, Louis LeBel, Marie Deschamps, Morris Fish, Rosalie Abella, Louise Charron
Reasons given
Majority by: Binnie J. Joined by: McLachlin CJ., Bastarache, Deschamps, Fish, Abella, Charron JJ. Concurrence by: LeBel J. Major J. took no part in the consideration or decision of the case.

Mattel, Inc. v. 3894207 Canada Inc. [2006] 1 S.C.R. 772, 2006 SCC 22 is a leading decision of the Supreme Court of Canada on the infringement of famous trade-mark names. The Court found that Mattel Inc. could not enforce the use of their trade-marked name "BARBIE" against a restaurant named "Barbie's".

Background

A Montreal woman attempted to register a trade-mark for the name "Barbie's & design" for her restaurant and catering services. Mattel Inc. sued her for trade-mark infringement for the use of the word "Barbie". Mattel alleged that the use of the name would create consumer confusion.

Lower Court Rulings

Trade-Marks Opposition Board

The Board found that there was not a strong likelihood of consumer confusion. It based its decision on the fact that Mattel presented no evidence of actual confusion (although it was not required to), the mark had a low degree of inherent distinctiveness (as it is a short form of the name "Barbara"), and the nature of the uses by the two parties were very different.

Trial Court

Mattel appealed the Board's ruling to the Federal Court. The Federal Court decided that the trade-mark, "Barbie" by Mattel is not iconic enough to cause consumer confusion. Instead, it found that all factors must be considered, including that of the nature of the wares. The judge found the wares to be quite different, and as a result dismissed the appeal.

Court of Appeals

Mattel again appealed. The Court of Appeals found no error by the lower court, and dismissed the appeal. Specifically, it found that the lower court judge was correct to reject a survey that showed merely a possibility of confusion and not the likelihood of confusion.

Supreme Court Ruling

Binnie, J. wrote the opinion to which seven other justices joined. LeBel, J. filed a concurring opinion.

First, the Court ruled that it was to review the Board's decision for 'reasonableness', i.e. whether the opinion could withstand a somewhat probing review and is not clearly wrong.

Though Binnie recognized that some marks become so popular that their use with any wares or services may be infringement, he found that "Barbie" did not hold such a strong mark. As a result, the Board needed to understand whether the two marks could create confusion or if both were allowed. The Court did rule, however, that a difference in the two wares or services was not dispositive, and the factor must be given varying weight depending on the circumstances.

The Court found that the survey conducted by Mattel could be excluded on the grounds that it did not answer the question of whether a consumer was most probably not going to be confused. As well, it stated that the level of confusion required was based on an 'ordinary consumer in a hurry'^[1]

Finally, the Court applied the traditional trade-mark confusion test to find that the Board was reasonable in determining that there was no likelihood of confusion between the two marks.

See also

• List of Supreme Court of Canada cases
• Kirkbi AG v. Ritvik Holdings Inc., a related case from the previous year.

References

1. ^ para. 58

External links

• Full text of Supreme Court of Canada decision available at LexUM and CanLII
• text of FCA decision
• text from FC decision