In two recent decisions the Supreme Court of Canada clarified the scope of protection for famous marks in Canada. In Mattel v 3894207 Canada Inc and Veuve Clicquot Ponsardin v Boutiques Cliquot et al, it dismissed appeals by the owners of the famous trademarks Barbie and Veuve Clicquot respectively.
The issue in both appeals was the extent to which the owner of the famous trademark could enforce its rights in its famous trademark against someone in Canada engaged in an apparently unrelated business. Mattel opposed an application to register a trademark consisting of the word ‘Barbie’s’ with a small design element filed by a company that operated a small chain of restaurants in Quebec. The famous French champagne maker sued a small chain of women’s fashion stores that catered to the midto low-price part of the market using the trade name ‘Cliquot’.
