Delhi High Court Grants Interim Injunction Against Unauthorized Use of ‘BARBIE’ Trademark in Hospitality Sector

In the trademark infringement case of Mattel, Inc. versus Padum Borah and others, the Delhi High Court granted an ad-interim injunction against Defendant No. 1, restraining the use of the trademark ‘BARBIE’ or any deceptively similar variants in relation to hospitality, catering, and kitchen equipment services. The Court found that Mattel had established a prima facie case of infringement and passing off, noting the defendant’s dishonest adoption of the mark and the potential for consumer confusion.

Mattel, Inc., the globally recognized proprietor of the ‘BARBIE’ trademark since 1959 and in India since 1987, holds over 1,800 registrations worldwide, including multiple classes in India such as Class 21. In 2024, Mattel became aware of Defendant No. 1’s trademark application for the device mark ‘BARBIE One Stop Solution for HORECA & Foods Processing’ along with related marks. Mattel contended that these applications infringed on its statutory and common law rights.

Despite receiving a cease-and-desist notice from Mattel, the defendant continued to use the contested marks across its business operations and digital platforms. The legal issues before the Court included whether the defendant’s use of ‘BARBIE’ and related variants constituted trademark infringement under the Trade Marks Act, 1999, whether it amounted to passing off and dilution of Mattel’s trademark, and whether an ad-interim injunction should be issued.

Mattel’s rights over the ‘BARBIE’ mark are longstanding and statutory. The defendant’s marks were found to be visually, phonetically, and conceptually identical, employing the dominant prefix ‘BARBIE’ combined with descriptive suffixes such as ENTERPRISE, CATERING, and HOSPITALITY. The defendant’s use of a stylized pink font was noted to mimic Mattel’s trade dress, increasing the likelihood of consumer confusion.

The defendant did not appear before the Court but admitted in its response to the Trademark Registry that ‘BARBIE’ is a well-known brand. However, it argued that its services fell under a different class (Class 21) and were unlikely to cause confusion.

The Court analyzed the grounds for injunction, emphasizing Mattel’s continuous use and registration of the ‘BARBIE’ trademark across a broad range of goods and services. It observed that the defendant’s addition of generic descriptors did not alter the overall impression of the marks, which remained deceptively similar to Mattel’s mark.

Further, the Court found that the defendant’s stylization, color scheme, and presentation were clearly designed to associate with Mattel’s well-known brand. The defendant’s admission of the mark’s fame, coupled with the absence of any justification for its adoption, led the Court to conclude that the use was dishonest and intended to unfairly benefit from Mattel’s goodwill.

The Court highlighted the risk of initial interest confusion among consumers, whereby the defendant’s use of the mark could attract attention based on the association with the ‘BARBIE’ brand. The defendant’s trademark application was filed on a proposed-to-be-used basis without any established commercial justification or distinctiveness.

Finding a strong prima facie case, the Court ruled that the balance of convenience favored Mattel and that irreparable harm would result if the injunction was not granted. Consequently, the Court issued 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’, ‘BARBIE KITCHEN MART’, or any other deceptively similar variants.

Additionally, the Court directed the defendant to remove all social media and web content referencing the impugned marks. It also instructed domain name registrars to lock and suspend the infringing domains pending the suit’s resolution.

As the Court stated in its order, “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,” underscoring the deceptive intent behind the defendant’s actions.