MATTEL, INC. & ANR .....

Plaintiffs Throug
Mr. Pravin Anand, Ms. Tush Malhotra & Ms. Rashi Punia, Advs.
Versus
MS. AMAN BIJAL MEHTA & ORS ..... Defendants
- HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

DR. P. SREE SUDHA

ASSOCIATE PROFESSOR
Details
The suit along with the application for interim relief
and the application under Section 151 of the Code of
Civil Procedure, 1908 (CPC)
for holding the hearing on the ex parte injunction
prayers in camera
The counsel for the plaintiffs has contended that this
suit pertains to a highly confidential subject matter
which may invoke media attention leading to
distorting/misrepresenting of facts and the proceedings
before this Court and in the absence of media reporting
the parties may also be more receptive to a settlement
Facts
The plaintiffs claim to be the owner of the “BARBIE”
trademark used in relation to toy dolls and other
merchandise related to or connected to the toy doll
named “BARBIE”.
It is pleaded
(i) that the plaintiffs have produced or licensed the product to numerous
motion pictures based on plaintiffs‟ world famous “BARBIE” brand;
(ii) the plaintiffs have worked with various public figures to create Barbie
Dolls in their likeness; examples are given of Diana Ross, Audrey
Hepburn, Princess Kate Middleton, J.K. Rowling, Grace Kelly, Jenifer
Lopez, Marilyn Monroe, Shakira and the popular Indian actress Katrina
Kaif;
(iii) that the plaintiffs, around 15th November, 2017, came across a music
video on YouTube of a song titled “Barbie Girl” from the movie Tera
Intezaar scheduled to be released on 24th November, 2017;
(iv) that the title and lyrics of the song used the registered and well known
trademark “BARBIE” without an authorisation of the plaintiffs and in a
manner antagonistic to the values and interests of the customers target
base, the plaintiffs cater to;
It is pleaded
(v) that the Encyclopedia Britannica lists Barbie as an 11-inch
tall plastic doll with figure of an adult woman that was
introduced in 1959 by Mattle Inc.;
(vi) the sales in India of Barbie products over the last five years
have exceeded 2000 million Indian rupees;
(vii) “BARBIE” reflects an aspirational figure on which the
consumers project to their dreams and aspirations; girls across
the globe identify the Barbie as a role model; Barbie connotes
a friend and confidante to an entire generation of girls;
(viii) the Barbie doll has multiple careers including of a doctor,
surgeon, firefighter, tennis player, astronaut etc.;
It is pleaded
(ix) Barbie has been identified as a well known trademark in
various jurisdictions;
(x) the actress / female dancer in the impugned song / video is also
seen to be inspired from the plaintiffs Barbie as she is dressed in
a baby pink dress and is found to be performing some dance steps
portraying to be the plaintiffs‟ Barbie mannequin doll;
(xi) the defendants have adopted the mark “BARBIE” as a catchy
word in the title and lyrics of their impugned song / music video
solely to generate publicity and attract unwanted attention for
commercial exploitation and gain;
(xii) with this intention the promotions and teasers of the impugned
song used the script similar to that as plaintiffs‟ trademark;
It is pleaded
(xiii) use of the defendants of the trademark “BARBIE” in their song
amounts to infringement and dilution of the plaintiffs‟ trademark;
(xiv) the lyrics of the impugned song “I‟m a sexy Barbie girl......hip
matke chaal......milky milky gaal.....Barbie beauty ko
sambhaal........” etc. are suggestive of an adult woman who is
sexually attractive and enticing;
(xv) that the Barbie girl in the impugned song has been impersonated
by an actress who is a prominent figure from the adult
entertainment industry; and,
(xvi) that the contents of the impugned song / its video are not
suitable for children and are provocative and inappropriate for
younger girls and children, tarnishing and degrading the distinctive
quality of the mark “BARBIE”.
Lets go party
Having remembered the song “Lets go party”, also with the name
“BARBIE” from the earlier days and the lyrics of the same also to
be provocative, I have enquired about the same from the counsel for
the plaintiffs and have after the hearing checked on the internet the
lyrics of the said song. The said song by the band “AQUA‟ is also
found to have contents as “ Hi, Barbie.......Hi, Ken........ Do you
wanna go for a ride?........ sure ken! ...... jump in.......I'm a Barbie
girl ……. I am a Barbie girl in the Barbie world………..you can
brush my hair…….undress me everywhere….I'm a blond bimbo girl
in a fantasy world……dress me up, make it tight, I'm your dolly…
feel the glamour in pink…..kiss me here, touch me there, hanky
panky.......you can touch, you can play, if you say, "I'm always
yours", with uu-oooh-u-u.‟s and ah-ah-ah-yeah‟s interspersed.
USA Judgment
copy of the judgment aforesaid of the United States
Court of Appeals, Ninth Circuit plaintiff no.1 Mattel,
Inc. to have brought the action, from which the appeal
to the United States Court of Appeal arose, against the
music companies marketing the aforesaid “Lets go
party” song, on similar grounds as on which the
plaintiffs are seeking to restrain the defendants therein.
United States District Court for the Central
District of California
denied relief to the plaintiff no.1 Mattel, Inc. and against
which denial the plaintiff no.1 Mattel, Inc. appealed to the
United States Court of Appeal, Ninth Circuit, which held (i)
music companies‟ use of “BARBIE” mark in song was not
an infringement of toy manufacturer’s trademark associated
with the doll;
(ii) song that lampooned toy manufacturer’s doll fell under
non-commercial use exemption in Federal Trademark
Dilution Act;
(iii) trademark rights do not entitle the owner to quash an
unauthorized use of the trademark by another who is
communicating ideas or expressing points of view;
United States District Court for the Central
District of California
(iv) trademark owner does not have the right to control public discourse merely because
the public imbues his mark with a meaning beyond its source identifying function;
(v) music companies‟ use of “BARBIE” mark in song was not an infringement of toy
manufacturer’s trademark associated with doll;
(vi) “Dilution” refers to the whittling away of the value of a trademark when it is used to
identify different products; injury from trademark dilution usually occurs when
consumers aren’t confused about the source of the trademark;
(vii) trademark law grants relief only against uses that are likely to confuse;
(viii) although the boundary between commercial and non-commercial speech has yet to
be clearly delineated, the core notion of commercial speech is that it does no more
than propose a commercial transaction; and,
(ix) if speech is not purely commercial, that is, if it does more than propose a
commercial transaction
plaintiff no.1 Mattel, Inc. applied to US Supreme Court but the US Supreme Court also
denied certiorari relief in the matteron, then it is entitled to full First Amendment
protection.
16th November, 2017 of the Supreme Court in W.P.(C)
No.1119/2017 titled Nachiketa Walhekar Vs. Central Board
of Film Certification
 a film namely “An Insignificant Man” as it contained
a video clip pertaining to the petitioner. It was the
contention of the petitioner before the Supreme Court
that the said video clip was originally shown by media
but after a complaint case was filed, it was not shown
and therefore such a film should not be granted
certificate by the Central Board of Film Certification
(CBFC). It was further contended that the petitioner
had a right under Article 14 and 21 of the Constitution
of India that he should not be projected in a manner in
which the film was going to depict.
The Supreme Court held that
“It is worthy to mention that freedom of speech and expression is sacrosanct
and the said right should not be ordinarily interfered with. That apart, when the
respondent No.1, CBFC, has granted the certificate and only something with
regard to the petitioner, which was shown in the media, is being reflected in the
film, this Court should restrain itself in not entertaining the writ petition or
granting injunction. Be it noted, a film or a drama or a novel or a book is a
creation of art. An artist has his own freedom to express himself in a manner
which is not prohibited in law and such prohibitions are not read by implication
to crucify the rights of expressive mind. The human history records that there
are many authors who express their thoughts according to the choice of their
words, phrases, expressions and also create characters who may look absolutely
different than an ordinary man would conceive of. A thought provoking film
should never mean that it has to be didactic or in any way puritanical. It can be
expressive and provoking the conscious or the sub-conscious thoughts of the
viewer. If there has to be any limitation, that has to be as per the prescription in
law.
The Supreme Court held that
The Courts are to be extremely slow to pass any kind
of restraint order in such a situation and should allow
the respect that a creative man enjoys in writing a
drama, a play, a playlet, a book on philosophy, or any
kind of thought that is expressed on the celluloid or
theater, etc.”
Sanjay Kishan Kaul speaking for the Division Bench of the
High Court of Madras in S. Tamilselvan Vs. The
Government of Tamilnadu 2016-3-L.W
The law has constituted CBFC to adjudge the need if any
for imposing „prior restraints‟ which otherwise are at
serious odds with the fundamental right enshrined in the
Constitution of speech and expression. Thus, once a film
has been cleared by CBFC for viewing, there is a
presumption in its favour including of the same being not
defamatory of any one. If after a film has been so cleared
by CBFC, the Courts were to act as super Censor Board
at the mere asking, it will have the potential of imposing
arbitrary and at times irrational prior restraints causing
severe damage to the right of freedom and expression.
Mattel Inc. Vs. Walking Mountain Products
353 F.3d 792 (2003)
also not accepted the argument of the “market harm by impairing the
value of Barbie,” reasoning the infringement therein to be percei
 toymaker “Toys – R – Us”. The toys are asserting rights as humans
were known to assert till now. a “parody of Barbie‟.
““Barbie was born Germany in 1950s as an adult collector’s item.
Over the years, Mattel transformed her from a doll that resembles a
“German street walker”, as she originally appeared, into a glamorous,
long legged blonde. Barbie has been labelled both the ideal American
woman and bimbo. She has survived attacks both psychic (from
feminists critical of her fictitious figure) and physical (more than 500
professional makeovers). She remains a symbol of American girlhood,
a public figure who graces aisles of toy stores throughout the country
and beyond. With Barbie , Mattel created not just a toy but a cultural
icon”.
grant of orders under Order XXXIX Rules
1&2
Though traditionally grant of orders under Order
XXXIX Rules 1&2 of the CPC was governed by the
elements of prima facie case, irreparable injury and
balance of convenience only but it is settled law that
an interim order can also be refused if the same is not
found to be in public interest.
counsel for the plaintiffs - compilation of
judgments
(i) Bloomberg, deletion and removal;
(ii) infringement through objectionable content; and,
(iii) trademark dilution; and, on
(iv) in camera proceedings and has contended that there is no
case of pornographic association, in which injunction has been
refused.
However, it is deemed appropriate by me to consider and deal
with all the aforesaid pleas at the after notice stage.
the defendants to delete the word “BARBIE” from the impugned
song and to notify the defendants that on their failure to do so,
the plaintiffs would be entitled to damages from the
defendants.
Christian Louboutin Sas vs Abubaker
& Ors. on 11 April, 2019
JUSTICE S.MURALIDHAR
JUSTICE I.S.MEHTA
Facts
 company duly incorporated under the existing laws of
France, having its registered office at Paris against the
Defendants who are located in Mumbai.
The suit was filed for a permanent injunction to
restrain the Defendants from infringing the Plaintiff’s
trademark, passing off, unfair competition, dilution
and tarnishment, apart from damages, rendition of
accounts of profits and delivery up etc.
Issue
According to the Plaintiff, when it conducted a market
survey in early April, 2018 it learnt of the Defendants
use of the Plaintiff’s ‘RED SOLE’ trademark on ladies
shoes being sold by the Defendants.
Relying on the report of a private investigator who
visited the premises of the Defendants,
the Plaintiff claimed that the Defendants were engaged
in counterfeiting activities by selling shoes that bore
the Plaintiff’s well-known trademark ‘RED SOLE’
It is alleged in the Plaint
‘RED SOLE’ trademark has been registered in Clause 25 with
No. 1922048 (with an illustration of an outsole of a shoe, which
is not reproduced here) in respect of the shoes, except
orthopaedic footwear, with the sole condition and disclaimer that
"the mark shall be limited to the colour Red as shown in the
representation on the Form of the application (Pantone No.
l8.1663TP)". The Plaintiff has explained that the aforementioned
RED SOLE trademark is in fact a device mark wherein a specific
tone of red colour (Pantone No. l8.1663TP) is applied to the
outsole of a shoe and "is unique in its own accord and became
known in the world of fashion only after being introduced by the
Plaintiff"
The claim of the Plaintiff is that:
"due to its uniqueness and since the said trademark is the central
and quintessential element of the goods of the Plaintiff, the
Plaintiff considers this intellectual property is incredibly valuable
and has expended a significant amount of resources on securing
registrations and protecting the 'RED SOLE' trademark".
hat the „RED SOLE‟ trademark is internationally recognizable
and has extensive usage in India; the 'RED SOLE' trademark
enjoys trans-border reputation in India; the goodwill and renown
of the 'RED SOLE' trademark has spilled over into India from
various countries and that the consumers are well aware of this
goodwill and reputation even before the Plaintiffs trademark was
first formally launched in India.
The Plaintiff, along with the above suit had
filed IA
No.6898/2018 under Order XXXIX Rules 1 and 2 of
the Code of Civil Procedure, 1908 („CPC‟), seeking
an interim injunction to restrain the Defendants inter
alia from manufacturing, selling or offering for sale,
footwear including ladies shoes bearing the 'RED
SOLE' trademark. A separate application was filed for
the appointment of a Local Commissioner to visit the
shops of the Defendants and seize the infringing
goods.
Impugned order of the Single Judge
(i) In view of the “admissions‟ in the plaint, the suit ought to be
dismissed in terms of Order XII Rule 6 CPC.
(ii) Even taking all the averments in the plaint to be „completely
correct‟, the Plaintiff would not be entitled to the reliefs of
infringement or passing off or claim "existence of dilution, unfair
competition etc".
(iii) Use of a single colour of the Plaintiff does not qualify the single
colour to be a trademark in view of provisions of Sections 2(m)
 and 2(zb) of the Trade Marks Act, 1999 („Act‟).
(iv) "Also Section 30 (2) (a) of the Trade Marks Act, in the facts of
the present case, is a complete disentitlement to the reliefs claimed
by the Plaintiff on the basis of causes of action pleaded in the
plaint".
Impugned order of the Single Judge
(v) The Plaintiff was also not entitled to the relief of injunction against
passing off because:
(a) a single colour cannot become a trademark and the Plaintiff cannot claim
rights in one colour as a trademark for exclusive use of the Plaintiff
(b) The issue of passing off would arise only if there was disentitlement in the
defendants to not use the red colour shade in the soles of the ladies footwear
being manufactured and sold by the Defendants, but there is no such
disentitlement for the Defendants because the user by the defendants of the
red colour shade on the footwear is pursuant to the legal rights conferred
upon the defendants under Section 30(2)(a) of the Trade Marks Act as
already discussed above.
(c) There would be no deception since the word mark under which the Plaintiff
were selling their goods was "CHRISTIAN LOUBOUTIN", which was
completely different from the Defendants‟ word mark/trademark “Veronica‟.
Impugned order of the Single Judge
(vi) Although the learned Single Judge did not base his
conclusions on Order VII Rule 11 CPC, he
nevertheless observed that "the suit does not contain
any legal cause of action because even if whatever are
the causes of action in the plaint are taken as correct,
even then such causes of action taken as true, will not
entitle the plaintiff for the reliefs as claimed in the
present suit".
Before the learned Single Judge, Mr. Sudhir Chandra, the learned Senior
counsel for the Plaintiff, placed reliance on two judgments of learned
Single Judge
he first was a decision dated 23rd April 2018 in CS (COMM)
738 of 2018 (Deere & Company v. Mr. Malkit Singh). The other
was a final judgment dated 12th December 2017 by another
learned Single Judge in CS (COMM) 714 of 2016 (Christian
Louboutin Sas v. Mr. Pawan Kumar) in which the Plaintiff‟s
entitlement to exclusive ownership of the trademark "RED
SOLE‟ in relation to its use on the soles of ladies‟ footwear was
upheld.
The learned Single Judge has in the impugned judgment held
the said judgments to have been incorrectly decided and,
therefore not binding or applicable since they did not consider
the definition of „trademark‟ under Section 2 (m) of the Act and
also did not notice Section 30 (2) of the Act.
Single Judges Reliance
In support of this conclusion the learned Single Judge
referred to the decisions in Padma Sundara Rao
(Dead) v. State of Tamil Nadu (2002) 3 SCC 533 and
N. Bhargavan Pillai (Dead) by Lrs. v. State of Kerala
(2004) 13 SCC
The substantial questions of law that arise for
determination are as follows:
(i) Can a commercial suit seeking a permanent injunction against infringement
of a registered trademark be dismissed at the very first hearing of the suit
invoking Order XII Rule 6 CPC? On the facts of the present case, can it be
said that the plaint disclosed ‘admissions’ of the Plaintiff that would disentitle
it to the reliefs prayed for in the suit?
(ii) Was the learned Single Judge, in the facts and circumstances of the present
case, without the Defendants entering appearance and raising any plea,
justified in holding that "a single colour cannot under any circumstances be
given the benefit for being used as an exclusively owned trademark of a
manufacturer/seller etc." and that the device mark of the Plaintiff "could
legally not have been got registered as a trademark."?
(iii) Was the learned Single Judge justified in proceeding to dismiss the suit
disagreeing with the correctness of the judgments of two co-ordinate benches
of the High Court on the very issue, without referring the matter to a larger
Bench?
Question No.1 - Order XII Rule 6 CPC
. In S. M. Asif v. Virendra Kumar Bajaj 2015 (9) SCALE 729,
the Supreme Court explained that:
"The words in Order XII Rule 6 CPC "may" and "make such
order..." show that the power under Order XII Rule 6 CPC is
discretionary and cannot be claimed as a matter of
right.Judgment on admission is not a matter of right and rather is
a matter of discretion of the Court. Where the defendants have
raised objections which go to the root of the case, it would not be
appropriate to exercise the discretion under Order XII Rule 6
CPC. The said rule is an enabling provision which confers
discretion on the Court in delivering a quick judgment on
admission and to the extent of the claim admitted by one of the
parties of his opponent‟s claim."
The DB further explained the different consequences that would entail where the
suit is dismissed summarily as opposed to the plaint being rejected under Order
VII Rule 11 CPC or returned under Order VII Rule 10 CPC. It held:

"We may also point out that there is a clear distinction

between „return of a plaint', „rejection of a plaint' and
‘dismissal of a suit'. These three concepts have different
consequences. A dismissal of a suit would necessarily
result in a subsequent suit being barred by the principles
of res judicata, whereas this would not be the case
involving ‘return of a plaint' or ‘rejection of a plaint'.
What the learned Single Judge has done is to have
dismissed the suit of the appellants/plaintiffs at the
admission stage itself without issuance of summons and
this, we are afraid, is contrary to the provisions of the
statute."
Answer to Question No.1
The learned Single Judge has in the impugned judgment
referred to only one aspect of the decision of the DB in 
Bright Enterprises Private Ltd. v. MJ Bizcraft LLP (supra)
which dealt with Order XIII A CPC, and overlooked the
above passages which were squarely applicable to the case
on hand and binding on the learned Single Judge.
The result of the above discussion is that Question (i) is
answered in negative. In the facts of the present case, and
considering the averments in the plaint, it cannot be said
that it discloses any „admission‟ by the Plaintiff of the case
of the Defendants that would disentitle it to the reliefs
prayed for in the suit.
Question (ii)
"Registration of a trademark is only prima facie
evidence of its validity vide Section 31(1) of the Trade
Marks Act and therefore once what has been got
registered as a trademark, could legally not have been
got registered as a trademark results in an illegality
because what is registered as a trademark could legally
not have been got registered as a trademark, then when
that matter comes up before the court then the courts
are surely entitled to reject the claim of ownership and
entitlement to a trademark which is not capable of
being a trademark under the Trade Marks Act."
Question No.2
he learned Single Judge has on an analysis of Section 10 read
with Section 30 (2) (a) of the Act come to the conclusion that a
"single colour not being a mark, the single colour cannot be
claimed as a trademark".
As pointed out by the Plaintiff, "this placement is illustrated in
the trademark registration certificate as being the outsole of a
shoe, which is limited to the colour Red." The Plaintiff further
claims that "The placement of the colour is completely arbitrary
and of a whimsical character. That further that this in-dissociable
combination constituting the mark does not result from the shape
imposed by the nature or function of the product. That if the RED
SOLE trademark is emblematic, it is due to the promotional
efforts of the Appellant."
Red Sole as a Device Mark
The specific case of the Plaintiff is that the said trademark was a
"device trademark" consisting of a combination of a colour red
and the placement of the said colour at a specific position on the
outsole of a shoe and that it would be wrong to assume that it
consists only of an individual single colour. It is pointed out that
the determination of the nature of the trademark was a ‘mixed
question’ of law and fact.
It must be recalled here that the Plaintiff is the holder of a
registered trademark and the suit is one for infringement. Under 
Section 31 of the Act, there is a prima facie presumption of
validity of a mark that is registered. It is not even the case of the
Defendants that they or anyone else applied for cancellation of
the Plaintiff‟s trademark. 
Answer to Question No.2
However, this Court would not like to comment
anything further on these aspects, lest it might
prejudice the case either in one way of the other. The
above discussion is only to highlight that at the very
first stage of the suit, it was simply not possible for the
learned Single Judge to come to such a definite
conclusion on whether the mark was unique; whether
it was validly registered in favour of the Plaintiff; and
whether the Plaintiff could seek the relief of restraining
the Defendants from infringing the said trademark.
Question (ii) is accordingly answered in the negative.
Question (iii)

The learned Single Judge noted in the impugned judgment that the
Plaintiff relied on two decisions of Single Judges of this Court in 
Deere & Company v. Mr. Malkit Singh and Christian Louboutin
SAS v. Mr. Pawan Kumar in support of the plea that the device mark
in question deserved protection from infringement. In Christian
Louboutin SAS v Mr. Pawan Kumar the suit was for infringement of
the very same ‘RED SOLE trademark of the Plaintiff. The Single
Judge who decreed the suit held that the said device mark was a ‘well
known‟ mark.
The learned Single Judge in the impugned judgment has disagreed
with the above decisions, which were of co-ordinate benches, on the
ground that they have been incorrectly decided and that they did not
consider the definition of „trademark‟ under Section 2 (m) of the Act
and Section 30 (2) (a) of the Act. 
Answer to Question No.3
In view of the legal position explained in the above
decisions, the learned Single Judge in the present case
ought to have referred the matter to a larger bench of two
Judges since he was unable to agree with the decisions of
co-ordinate Single Judges which supported the case of the
Plaintiff. Question (iii) is accordingly also answered in the
negative.
The Court has refrained from discussing the merits of the
issues decided by the learned Single Judge for the reason
that the suit requires consideration at the hands of the
learned Single Judge after the Defendants enter appearance
and make their submissions in accordance with law.
Conclusion
For the aforementioned reasons, this Court sets aside the
impugned judgment dated 25th May 2018 of the learned Single
Judge and restores the suit CS (COMM) No. 890 of 2018 and the
applications pending therein to the file of the learned Single
Judge for disposal in accordance with law. The Court‟s attention
has been drawn to Order 41 Rule 23 CPC which enables the
Appellate Court, while remanding the case to issue further
directions. In terms thereof, the Court directs that both the
counsel for the Plaintiff and the Defendants shall remain present
before the learned Single Judge on 13th May 2019, when the
aforementioned suit with all the pending applications therein,
shall be listed for directions.
The appeal is allowed