The Delhi High Court was recently approached by toy-maker Mattel Inc. (the Plaintiff), the manufacturer of “Barbie” dolls. It had come to their notice that the makers of the Hindi movie “Tera Intezaar” had included a song called “Barbie girl” in their movie. Consequently, Mattel sued the producers of the movie for Trademark infringement of “Barbie” and requested the High Court for an ex-parte injunction to restrict the release of any version of the movie that includes the aforementioned song.

Mattel is the owner of the “Barbie” trademark in India for multiple classes of goods. The issue pointed out by Mattel in their allegation is two-fold. One issue is the alleged trademark infringement by the use of the word “Barbie” in the song. The second issue put forth by the Plaintiff is the alleged dilution of the Plaintiff’s “Barbie” trademark.

The Plaintiff alleged that their trademark was repeated multiple times in the song while the actress performed dance steps inspired by a Barbie doll. Further, the Plaintiff alleged that their trademark was included in the song merely to increase the commercial aspects of the movie. The Plaintiff also alleged that dilution of their trademark had occurred through the suggestive lyrics of the song, which feature an actress who is a prominent figure from the adult entertainment industry. The Plaintiff further contended that the contents of the song and its video are provocative, inappropriate and unsuitable for children, especially young girls, which has resulted in the tarnishing and degrading of the quality of the trademark “Barbie”.

The Plaintiff requested the Delhi High Court to grant an “in-camera” ex-parte hearing, wherein the case would be recorded instead of taking place openly. This request was refused by the Court on the grounds that ultimately, the dispute would become public and media reporting cannot be prevented.

The Delhi High Court also advised the parties to chill. This rather informal suggestion was replicated from a 2002 United States Court of Appeals judgement, regarding a similar infringement allegation of the “Barbie” trademark. This case involved the famous song “Barbie girl” from the Danish band “Aqua”. The Plaintiff, Mattel, had sued the Defendants, a music company, over allegations similar to the current case.

Initially, the United States District Court denied relief to the Plaintiff by reasoning that the use of the “Barbie” mark in the song was not an infringement of the toy manufacturer’s trademark associated with the doll. The District Court further stated that trademark rights do not entitle the owner to nullify an unauthorized use of the trademark by another entity who is communicating ideas or expressing points of view using the trademark. Further, the District Court stated that the trademark owner does not have the right to control public discourse merely because the public imbues the mark with a meaning beyond its source. Hence, the music company’s use of “Barbie” was not an infringement of the trademark. Upon appeal, the Court of Appeals requested the Plaintiff and Defendants to chill, or calm down in other words.

The Delhi High Court too stated the abovementioned matter. Further, it also quoted the Supreme Court’s decision in Nachiketa Walhekar Vs. Central Board of Film Certification as follows: “It is worthy to mention that freedom of speech and expression is sacrosanct and the said right should not be ordinarily interfered with. … 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 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.”.

Interestingly, the Delhi High Court also mentioned that granting an ex-parte order may send a wrong signal to the public at large. The Judge kept in mind on-going issues concerning another movies, which have been in the news recently over demands by one section of the society for banning it. Additionally, the Judge concluded the matter by stating that the plea may be considered at the notice stage. Thus, it remains to be seen what further steps are taken by the Plaintiff in this regard.

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