Introduction
The Delhi High Court recently granted an injunction to restrain the Defendant from using the ‘BARBIE’ trademark for their business. The concerned case is of Mattel, Inc. versus Padum Borah and Ors., 2025.
Background
Mattel, Inc. (Plaintiff) is a company founded in 1945. It coined and adopted the trademark ‘BARBIE’ in 1959. In August 2024, the Plaintiff issued a notice to the Defendant after knowing that the Defendant had applied for the mark ‘BARBIE One STOP Solution for HORECA & Foods Processing.’ In addition to this, the Plaintiff also found that the BARBIE marks were being used in connection with commercial kitchen equipment, event management, and catering services, all owned by the Defendant. It also found that the Defendant’s websites consist of the word ‘BARBIE’ in their domain names. After this, the Plaintiff applied for an injunction under Order 39 of the CPC, 1908, to restrain the Defendant from infringing and passing off the registered trademark.
Key Points
Plaintiff’s goodwill– The court noted Mattel Inc.’s reputation for toys. Through global campaigns such as “You Can Be Anything,” the company has gained goodwill. Its initiatives are known for promoting inclusivity and diversity. It also operates the website www.barbie.com, which leads users to its official portals showing BARBIE products and campaigns. The Plaintiff brought the BARBIE doll to India around the 1980s and has been continuously using the trademark BARBIE across a wide range of goods and services. It is a well-known trademark, evident from 1800 existing trademark registrations across hundreds of countries.
Likelihood of confusion and deceptive similarity– The court perused the objections raised by the Trade Marks Registry under section 11 (1) of the Trade Marks Act, 1999, on the ground of its similarity/identity to an earlier trademark that may confuse the public through its association with the earlier trademark. The Defendant argued that it uses the word ‘BARBIE’ in combination with other expressions that make it distinctive. The court rejected the Defendant’s argument. It highlighted that ‘BARBIE’ is the dominant element, and the impugned marks are visually and phonetically identical to those of the Plaintiff’s trademark. It found the Defendant’s marks, suffixes like HOSPITALITY, CATERING, KITCHEN MART, etc., generic, making it impossible to distinguish these marks.
Interim injunction as a remedy– The court applied the initial interest confusion test used in Under Armour Inc v. Anish Agarwal and Anr. It ruled that the Defendant has adopted the BARBIE trademark “to create an initial interest in the mind of the consumer to capture their attention.” The triple test to grant injunctions was satisfied in this case. The court was satisfied that there exists a prima facie case in favour of the Plaintiff, and the balance of convenience also lies in favour of the Plaintiff and against the Defendant. This test undertakes to consider whether the Plaintiff is likely to suffer irreparable harm in case an injunction is not granted. The court found that it does.
Recent developments
This case highlights the importance of adopting distinctive and unique terms as trademarks. Doing so aligns with the objective of a trademark, which is to distinguish the goods or services of one person from those of others, as evident from its definition under the Trade Marks Act, 1999.
Conclusion
Thus, the Defendant was prevented by the court from using marks containing ‘BARBIE’. It also directed the removal of social media pages that refer to the impugned marks. This decision is a victorious step for Mattel, Inc.
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WRITTEN BY: FARZEEN ZAMAN
