Summary
In the case of Mattel, Inc. vs. Padum Borah & Ors, the Delhi High Court granted an ad-interim injunction restraining Defendant No. 1 from using the trademark ‘BARBIE’ or any deceptively similar variants in connection with its hospitality, catering, and kitchen equipment services. The Court held that the Plaintiff had established a prima facie case of infringement and passing off, and that the adoption of the mark by the Defendant was dishonest and likely to cause confusion.
Background:
Trademark Infringement and Passing Off Dispute The Plaintiff, Mattel, Inc., is the registered proprietor of the globally known trademark ‘BARBIE’, introduced in 1959 and in India since 1987. It holds more than 1,800 registrations worldwide, including several in India across multiple classes, including Class 21. In 2024, the Plaintiff became aware of Defendant No. 1’s trademark application for the device mark ‘BARBIE One Stop Solution for HORECA & Foods Processing’ and related marks, which it believed infringed its statutory and common law rights. Despite a cease-and-desist notice, the Defendant continued using the impugned marks across its business offerings and digital platforms.
Questions Before the Court
- Whether the Defendant’s use of the mark ‘BARBIE’ and related variants amounts to trademark infringement under the Trade Marks Act, 1999.
- Whether the use of these marks by the Defendant leads to passing off and dilution of the Plaintiff’s trademark.
- Whether an ad-interim injunction should be granted to restrain the Defendant from continuing the use of the impugned marks.
Arguments Presented By the Parties
Plaintiff’s Submissions:
- The Plaintiff has statutory rights over the ‘BARBIE’ mark since 1959, and in India since 1987.
- The Defendant’s mark is visually, phonetically, and conceptually identical, using the dominant prefix ‘BARBIE’ with descriptive suffixes like ENTERPRISE, CATERING, and HOSPITALITY.
- The Defendant’s use of a stylized pink font mimics the Plaintiff’s trade dress, likely to confuse consumers.
- Defendant’s applications are made on a ‘proposed to be used’ basis, and there is no honest commercial justification for using ‘BARBIE’ for unrelated services.
Defendant’s Position:
- The Defendant did not appear before the Court. In its response to the Trademark Registry, it admitted that ‘BARBIE’ is a well-known brand but argued that its services fall under a different class (Class 21) and are unlikely to cause confusion.
Court’s Analysis
Court’s Analysis of the Grounds for Injunction The court stated that the Plaintiff is the registered proprietor of the trademark ‘BARBIE’ and has continuously used it across a wide range of goods and services. The court noted that the impugned marks adopted by Defendant No. 1 included the prefix ‘BARBIE’ with generic descriptors such as ‘ENTERPRISE’, ‘HOSPITALITY’, ‘CATERING’, and ‘KITCHEN MART’.
According to the court, these additions did not change the overall impression of the marks, which remained deceptively similar to the Plaintiff’s trademark. The court observed that the stylization, colour scheme, and presentation used by the Defendant were clearly designed to create an association with the Plaintiff’s well-known brand.
The court said that Defendant No. 1 admitted the well-known status of the BARBIE mark but failed to provide any justification for adopting it. The court found that this adoption was dishonest and intended to derive unfair advantage from the goodwill of the Plaintiff. It noted that such adoption would likely cause initial interest confusion among consumers, drawing attention based on the association with the BARBIE brand.
The court observed that Defendant No. 1’s trademark application was filed on a proposed-to-be-used basis, and it had not established any commercial justification or distinctiveness in its use of the BARBIE mark.
In the eyes of the court, the Plaintiff had established a strong prima facie case. The court stated that the balance of convenience was in favour of the Plaintiff and that irreparable harm would be caused if an injunction was not granted.
Findings
The court passed an ad-interim injunction restraining Defendant No. 1 from using the marks ‘BARBIE’, ‘BARBIE One Stop Solution for HORECA & Foods Processing’, ‘BARBIE ENTERPRISES’, ‘BARBIE HOSPITALITY’, ‘BARBIE CATERING’, and ‘BARBIE KITCHEN MART’, or any other deceptively similar variant.
The court directed the Defendant to remove all social media and web content referencing the impugned marks and instructed domain name registrars to lock and suspend the infringing domains pending the suit.
Relevant Paras
Paragraph 31: “It is apparent that the Defendant No. 1 has adopted this famous mark so as to create an initial interest in the mind of the consumer…”
Paragraph 32: “In the considered opinion of this Court, the Plaintiff has been able to make out a prima facie case in its favour… irreparable harm…”
Paragraph 33: “Accordingly, till the next date of hearing, the following directions are hereby issued: Defendant No. 1… restrained from using the impugned marks…”
Case Citation
Mattel, Inc. vs. Padum Borah and Ors., CS(COMM) 948/2025, decided by the Delhi High Court on 8 September, 2025. https://indiankanoon.org/doc/146426153/ (Visited on 25 October, 2025)
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog. Views are personal.
