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  • News blog
  • 18 October 2024
  • European Innovation Council and SMEs Executive Agency
  • 4 min read

Paris court dismisses Mattel's copyright infringement lawsuit over Barbie dolls - EU trade mark dispute: e.plus

Paris court dismisses Mattel's copyright infringement lawsuit over Barbie doll

On 25 September, the Tribunal judiciaire de Paris ruled in case 20/10053 on a dispute concerning Barbie dolls between the US company Mattel, the creator of Barbie, and the Dutch toy distributor Toi-Toys.

The conflict arose when Toi-Toys began to commercialise its "Lauren" dolls, which were marketed alongside toys such as a pink scooter and a pink car. This led Mattel to accuse the Dutch company of copyright infringement, unfair competition and parasitism. Mattel claimed that the head of the Lauren doll closely resembled that of its "Barbie CEO" doll. On the other hand, Toi-Toys stated that Mattel was attempting to monopolise a common design in the doll industry.

The characteristics attributed to Barbie's head include an oval face, a broad and flat forehead, almond-shaped eyes with the outer corners higher than the inner corners, a small straight nose and a smile with slightly visible teeth. She also has rounded cheeks, high cheekbones and a soft chin with no pronounced jawline. According to the court, these elements give Barbie a harmonious appearance and a pleasant expression that reflected the creative choices of her creator, meaning that the Barbie doll’s face is protected by copyright.

However, the Court held that the Lauren doll was not a counterfeit of Barbie. Although there were similarities, the Lauren doll's head had notable differences such as a narrower base, more prominent chin and ears, and a flatter forehead. This led the Court to dismiss Mattel's claims of copyright infringement.

As regards the claim of unfair competition, the Paris Court pointed out that commercial freedom allows the reproduction of products not protected by intellectual property rights, as long as there is no confusion about the origin of the product. In this case, the Court considered that there was neither unfair competition nor parasitism, as the differences between the dolls were sufficient to avoid confusion. Furthermore, although Toi-Toys sold similar toys, such as a pink scooter and a pink car with a black interior, these were presented alongside other products in packaging that did not mislead consumers as to their origin. Moreover, these products refer to the American culture of the 1950s and 1960s, which is very common in the toy market.

To sum up, the Paris Court recognised that Mattel owns the copyright on the head of the Barbie doll because of the creative choices made in its design. However, the Lauren doll does not infringe these rights and there was no unfair competition, as the mere sale of similar products does not constitute unfair competition, but rather legitimate competition.

 

EU trade mark dispute: e.plus

On October 16, the General Court of the European Union ruled in cases T‑604/23 and T‑570/23, related to a dispute over the revocation of the European Union trade mark “e.plus”.

In April 2021, the US company ePlus Inc. filed an application with the European Union Intellectual Property Office (EUIPO) for the revocation of the e.plus trade mark, registered under the number 001132299 and owned by Telefónica Germany GmbH & Co, who claimed the seniority of the German trade mark No 398151725. ePlus stated that there was no genuine use of the mark in respect of several goods and services in Classes 9 and 38 of the Nice Classification, including devices for recording, transmitting or reproducing sound and images, network cables, telecommunications services and mobile networks.

The Cancellation Division of the EUIPO partially revoked the trade mark, maintaining it only for SIM cards (class 9) and services related to mobile telephony and the operation of mobile networks (class 38). Both ePlus Inc. and Telefónica Germany appealed against this decision. The EUIPO Board of Appeal partially overturned the decision, stating that genuine use of the mark in Germany had been proven for mobile telephony services, internet service providers, the operation of mobile networks and messaging services. However, it considered that genuine use had not been proved for other telecommunications services not related to mobile networks and therefore dismissed part of Telefónica's appeal and ePlus Inc.'s appeal in its entirety.

Once again, both Telefónica Germany and ePlus Inc. appealed that decision to the General Court of the European Union, which had to determine whether the mark had been genuinely used.

The General Court noted that the Board of Appeal had correctly assessed the evidence submitted, including invoices, website extracts, sworn statements and advertisements, which demonstrated genuine use of the mark in relation to mobile telephony services and the operation of mobile networks during the relevant period (from 12 April 2016 to 11 April 2021 – the 5 years preceding the revocation proceeding initiated by ePlus). In addition, the Court pointed out that the sworn statements showed that SIM cards and prepaid cards sold under the mark had generated significant sales volumes. It also highlighted that the catalogues and advertisements showed how the trade mark was associated with offers enabling customers to access the Internet, thus also proving the use of the trade mark for the services of ISPs and the operation of ISP networks. 

Telefónica on the other hand argued that the Board of Appeal should not have partially revoked the e.plus trade mark in relation to certain services in Class 38, as all services in this class are so interlinked as to be undividable unless done so along an arbitrary line. The Court also refused this argument, as “telecommunications” in this Class consist of a large number of services which can indeed be divided into subcategories, such as telephone messaging services on one side, and ISP services on the other. As such, it stated that the Board of Appeal had not acted arbitrarily and upheld its decision

Therefore, the General Court upheld the decision of the EUIPO and recognised the genuine use of the e.plus trade mark for only parts of the services in question.

Details

Publication date
18 October 2024
Author
European Innovation Council and SMEs Executive Agency