Phonetically And Conceptually Identical: Delhi High Court Restrains Man From Using ‘Barbie’ Trademark
Mattel Inc filed a suit seeking a permanent injunction restraining infringement of its registered trademark.
The Delhi High Court restrained a man using the mark ‘BARBIE’ in a distinct category of kitchen equipment, event management, and catering services and observed that it was visually, phonetically and conceptually identical.
A suit was filed along with an application under Order XXXIX Rule 1 and 2 of CPC by Mattel Inc d seeking an ad-interim injunction against the Defendant restraining them from infringing and passing off Mattel’s registered trademark ‘BARBIE’.
The Bench of Justice Manmeet Singh Arora observed, “The Defendant No. 1 relies on the by-line accompanying the word BARBIE to contend the distinctiveness. However, on a perusal of the said mark of the Defendant No. 1 and the other impugned marks, it is apparent that BARBIE is the dominant prefix and it is visually, phonetically and conceptually identical. The adoption of the said famous mark, which is otherwise arbitrary, by the Defendant No. 1 for its product and services is without any reasonable explanation.”
Advocate Shwetasree Majumder represented the Petitioner.
Case Brief
A suit was filed by Mattel Inc., a toy entertainment company, having Brands such as “Barbie”, seeking a permanent injunction restraining infringement of its registered trademark, passing off and other ancillary reliefs. An Application under Order XXXIX Rule 1 and 2 of CPC was also filed seeking an ad-interim injunction against the Defendant restraining them from infringing and passing off Mattel’s registered trademark ‘BARBIE’.
It was submitted by Mattel that it coined and adopted the trademark BARBIE in 1959 and the said trademark has evolved into a multifaceted brand symbolizing imagination, aspiration, and inspiration for generations. It was further submitted that BARBIE doll in India as early as 1987 and has since been continuously and extensively using the trademark BARBIE across a wide range of goods and services, not limited to toys.
Further, the Mattel contended that it became aware of Defendant’s trademark application for the device mark ‘BARBIE One Stop Solution for HORECA & Foods Processing’. It was contended that the Defendant was using the BARBIE marks in connection with commercial kitchen equipment, event management, and catering services.
Court’s Observation
The Delhi High Court observed that Mattel’s trademark BARBIE is the dominant element, and the marks of the Defendant No. 1 were visually identical to that of the Mattel’s trademark.
The Court observed, “However, on a perusal of the said mark of the Defendant No. 1 and the other impugned marks, it is apparent that BARBIE is the dominant prefix and it is visually, phonetically and conceptually identical. The adoption of the said famous mark, which is otherwise arbitrary, by the Defendant No. 1 for its product and services is without any reasonable explanation.”
The High Court also took into consideration the contention of the Mattel that the Defendant 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.
Accordingly, the Delhi High Court restricted the Defendant from using the marks BARBIE or any other deceptively similar variant/s of the Plaintiff’s registered BARBIE trademarks, in domain names, websites, social media handle names, hashtags, email addresses, bank accounts or any business papers.
The Court also directed the Defendant to remove all their social media pages/profiles/accounts including but not limited to Facebook, Instagram and LinkedIn, referring to the marks BARBIE One Stop Solution For HORECA & Foods Processing.
Accordingly, the High Court listed the matter in March, 2026.
Cause Title: Mattel Inc. V. Padum Borah & Ors.
Appearance: Advocates Shwetasree Majumder, Prithvi Singh, Prithvi Gulati and Ritwik Marwaha
