Delhi High Court: In a case wherein the suit was filed by the plaintiff, Mattel Inc. against the defendants, namely Present Enterprises, Techhark Trade Inc., Wishkey Retail LLP, Flipkart Internet (P) Ltd. (‘Flipkart’) and John Doe seeking permanent injunction restraining infringement of trade marks, infringement of copyright, passing off, damages; rendition of accounts; delivery up, Prathiba M. Singh, J.*, after considering the proprietary rights in the ‘Rainforest Family’ characters which were automatically recognised in India owing to the USA and Europe registrations and also the word mark registration of the mark ‘KICK & PLAY’, held that a decree of permanent injunction deserved to be passed in the present suit.
Background
The plaintiff was one of the most well-known toy companies in the world and was set up in 1945. Initially, the plaintiff manufactured and sold picture frames, dollhouse furniture, etc., thereafter, it expanded into some of the most well-known brands such as Barbie, Hot Wheels, Fisher-Price, Uno, Scrabble, etc. In 1993, the plaintiff merged with Fisher-Price and since then, was one of the biggest manufacturer and seller of children/toddler’s toys world-over. The plaintiff entered India in 1986 with its Indian subsidiary Mattel Toys (India) (P) Ltd and claimed to have adopted the trade mark ‘KICK AND PLAY’ for game and playthings in 2010 and started using the said trade mark in India since 2012. The plaintiff in 2017 launched the ‘Infant to Toddler Rocker with Rainforest Family’ characters featuring therein.
In the present suit, the plaintiff seeks to enforce the registered word mark ‘KICK AND PLAY’ and the associated design for children’s gyms which had been granted registration as a shape trade mark. In addition, the plaintiff also seeks to protect the ‘Rainforest Family’ of characters protected under copyright law in the USA. The grievance of the plaintiff was that it came across several listings on www.flipkart.com where Defendant 1 to 3 were offering almost identical ‘KICK AND PLAY’ baby gyms depicting the plaintiff’s registered ‘Rainforest Family’ of characters. Accordingly, the plaintiff prayed for permanent injunction and a decree for damages.
Comparative images of the plaintiff’s and the defendant’s products
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Plaintiff’s KICK & PLAY baby gym products |
Defendants’ infringing products |
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Analysis, Law, and Decision
The Court noted that initially when the suit was filed, both ‘KICK AND PLAY’ word mark and the shape mark were pending registration but the same were registered during the pendency of the suit. The Court further noted that Flipkart was ready to comply with the orders that might be passed by this Court and shall take down listings which might be brought to its notice by the plaintiff in terms of the order passed by this Court.
The Court also noted that the word mark ‘KICK AND PLAY’ for children’s gym had been registered in Class 28 without any conditions for the goods “toys, playthings, baby gyms”. The Court opined that while the words KICK and PLAY separately were dictionary words, the combination of words, having been registered by the plaintiff, deserved to be protected especially in the context of play gyms for children. The Court reiterated that when a descriptive mark was used for a long time and garnered sufficient goodwill, it could be said to have acquired secondary meaning.
The Court opined that the plaintiff’s baby gym product was itself quite a distinctive product which was designed in a particular form along with depiction of characters which were known loosely as a ‘Rainforest family’ characters. The Court noted that the said gym product was replicated by several parties on Flipkart and presently also there were sellers offering ‘KICK AND PLAY’ gyms for children which were identical to the plaintiff’s products.
The Court after considering the proprietary rights in the ‘Rainforest Family’ characters which were automatically recognised in India owing to the USA and Europe registrations and the word mark registration of the mark ‘KICK AND PLAY’, held that a decree of permanent injunction deserved to be passed in the present suit. Thus, the suit was accordingly decreed in the following terms:
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A decree of permanent injunction was granted restraining Defendant 1 and 2 or anyone acting for or on their behalf from manufacturing, selling, offering for sale any baby gyms, under the mark/name ‘KICK AND PLAY’ on online platforms or in physical shops with the ‘Rainforest family’ characters or similar characters;
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A decree of permanent injunction was also granted restraining listing of baby gyms of other unknown parties on the Flipkart e-commerce platform bearing the mark ‘KICK AND PLAY’ which depicted the ‘Rainforest family’ characters or similar characters;
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It was clarified that baby gym products without the mark ‘KICK AND PLAY’ or the Rainforest characters and similar characters, would not be covered by this injunction. In addition, the injunction would not extend to the words ‘KICK’ or ‘PLAY’ used disjunctively.
[Mattel Inc. v. Present Enterprises, 2023 SCC OnLine Del 5474, decided on 18-08-2023]
Advocates who appeared in this case :
For the Plaintiff: Shwetasree Majumder, Prithvi Singh, Prithvi Gulati, Advocates
For the Defendants: Manish Jha, Shruti Dass, Aishna Jain, Advocates
*Judgement authored by: Justice Prathiba M. Singh
