Delhi HC grants ex-parte ad-interim injunction in favour of Mattel in copyright infringement case

Delhi HC grants ex-parte ad-interim injunction in favour of Mattel in copyright infringement case

Justice Mukta Gupta of the Delhi High Court granted an ex-parte ad-interim injunction restraining the defendants Present Enterprises & Ors (including Flipkart) from violating the plaintiff's copyright in the six characters of the 'Rainforest Family' in any manner on their products till the next date of hearing.

The Court also directed Flipkart to remove the listings from its platform which relate to the advertisement and sale of the products which violate the copyright of the plaintiff in the six characters of the 'Rainforest Family'.

Mattel Inc. (Plaintiff) filed a suit with the Delhi High Court claiming that it is into the business of selling games, toys etc. for children since the year 1945. In the year 1993 plaintiff merged with Fisher-Price and since then is one of the biggest manufacturer and seller of the children/toddler's toys world-over.

The plaintiff claimed that it had adopted the trademark 'KICK AND PLAY' for game and playthings in the year 2010 and started using the said trademark in India since 2012. In the year 2012 the plaintiff also designed and adopted a set of cartoon animal characters titled as 'Rainforest Family' consisting of six characters.

The plaintiff further claimed that on 13th August, 2020 it applied for registration of the trademark 'KICK AND PLAY' in Class-28 in India and on 9th September, 2020 applied for the registration of the shape mark of its 'KICK AND PLAY' baby gym in Class-28 in India.

In the present suit the plaintiff claimed infringement of its copyright in respect of its six characters of 'Rainforest Family', as also passing off the goods of the defendants as that of the plaintiff by using trademark 'KICK AND PLAY' as also the violation of the shape mark of its 'KICK AND PLAY' baby gym.

The Delhi High Court observed, "A bare perusal of the six characters shows that they have been uniquely prepared with the unique colour combination which is attractive and appealing to the children and by virtue of Section 40 of the Copyright Act, registrations in favour of the plaintiff in respect of six characters in USA would also extend to India in terms of International Copyright order notified in the Official Gazette on 24th March, 1999."

The Court held that considering the plaintiff's copyright granted in USA in respect of the six characters of the 'Rainforest Family', it would also extend to India in terms of Section 40 of the Copyright Act.

Thus the Court held that the plaintiff has made out a prime facie case in its favour at this stage for grant of an ex-parte ad-interim injunction qua the copyright violation in relation thereto.

Further, with respect to the trademark violation of the word mark 'KICK AND PLAY' as also the design mark, the Court stated that it would hear the defendants in the first instance before passing any ad-interim injunction.