Trademark Infringement and Passing Off Dispute The Plaintiff, Mattel, Inc., is the registered proprietor of the globally known trademark \u2018BARBIE\u2019, 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\u2019s trademark application for the device mark \u2018BARBIE One Stop Solution for HORECA & Foods Processing\u2019 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.<\/p>\n
Court\u2019s Analysis of the Grounds for Injunction The court stated that the Plaintiff is the registered proprietor of the trademark \u2018BARBIE\u2019 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 \u2018BARBIE\u2019 with generic descriptors such as \u2018ENTERPRISE\u2019, \u2018HOSPITALITY\u2019, \u2018CATERING\u2019, and \u2018KITCHEN MART\u2019.<\/p>\n
According to the court, these additions did not change the overall impression of the marks, which remained deceptively similar to the Plaintiff\u2019s 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\u2019s well-known brand.<\/p>\n
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.<\/p>\n
The court observed that Defendant No. 1\u2019s 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.<\/p>\n
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.<\/p>\n
The court passed an ad-interim injunction restraining Defendant No. 1 from using the marks \u2018BARBIE\u2019, \u2018BARBIE One Stop Solution for HORECA & Foods Processing\u2019, \u2018BARBIE ENTERPRISES\u2019, \u2018BARBIE HOSPITALITY\u2019, \u2018BARBIE CATERING\u2019, and \u2018BARBIE KITCHEN MART\u2019, or any other deceptively similar variant.<\/p>\n
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.<\/p>\n
Paragraph 31: \u201cIt 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\u2026\u201d<\/p>\n
Paragraph 32: \u201cIn the considered opinion of this Court, the Plaintiff has been able to make out a prima facie case in its favour\u2026 irreparable harm\u2026\u201d<\/p>\n
Paragraph 33: \u201cAccordingly, till the next date of hearing, the following directions are hereby issued: Defendant No. 1\u2026 restrained from using the impugned marks\u2026\u201d<\/p>\n