Granting relief to toy giant Mattel Inc., the Delhi High Court recently restrained a local firm from using a similar variant of its registered Barbie trademarks. Justice Manmeet Pritam Singh Arora, in an order dated September 8, barred the infringing company— engaged in selling kitchenware and involved in hospitality and catering services— from using marks such as ‘Barbie Hospitality’, ‘Barbie Catering’, ‘Barbie Enterprises’, and ‘Barbie Kitchenware’. “It is apparent that Defendant No. 1 has adopted this famous mark so as to create an initial interest in the mind of the consumer with respect to the products of the defendant and to capture the customer’s attention,” the court held. The court also ordered the takedown of social media posts by the kitchenware-maker. Noting that Mattel Inc. made a prima facie case in its favour, and that the balance of convenience also lay with them, the court granted an ad-interim injunction against the use of the ‘Barbie’ mark. Mattel informed the court that it first became aware of a trademark application for the device mark ‘Barbie One Stop Solution for HORECA & Foods Processing’ last August. In its reply to the trademarks registry in April this year, the company argued that its use of the word ‘Barbie’, in combination with other expressions, was distinctive and unlikely to cause confusion. The firm also asserted that it was seeking trademark registration for a different class of goods than those of Mattel. Mattel further discovered that the infringing mark was being used in connection with commercial kitchen equipment, event management, and catering services. These services were advertised and made available on third-party portals such as IndiaMart, as well as on the company’s website. The American toy maker introduced the Barbie doll in India in 1987 and has since extensively used the trademark across a wide range of goods and services, not limited to toys.
