Author: Sri Lekha
In the matter of Mattel Inc. v. Present Enterprises & Ors. [CS(COMM) 447/2020], a Single Judge [Mukta Gupta, J.] of the High Court of Delhi vide order dated October 13, 2020, granted an ex-parte ad interim injunction restraining Defendant Nos. 1, 2 and 3 and other unknown Defendants (“Defendants”) from infringing the Plaintiff’s copyright in the six characters of its product – ‘Rainforest Family’ and also directed Flipkart (Defendant No. 4) to de-host Defendants’ listings for such products.
The Plaintiff (viz. Mattel Inc.), a manufacturer and seller of games, toys etc. for children, instituted the instant suit contending that the Defendants are using the Plaintiff’s copyrights in respect of its six characters of ‘Rainforest Family’ and passing off the goods as that of the Plaintiff. The Plaintiff also contended copyright infringement of its artistic work in a set of cartoon animal characters titled ‘Rainforest Family’, for which it owns a copyright registration in the USA.
Further, it was alleged that the Defendants were also passing off the Plaintiff’s trademark and shape mark – ‘KICK AND PLAY’. The Plaintiff contended that it adopted the trademark ‘KICK AND PLAY’ for game and playthings in 2010 and started using the same in 2012. The Plaintiff argued that its products (viz. the six characters of ‘Rainforest Family’ and the goods under the ‘KICK AND PLAY’ trademark), having a lot of variety of colour combination and being appealing and effectively useful, are sold/listed by the Defendants violating the Plaintiff’s trademark rights.
The Court on a perusal of the Plaintiff’s submissions held that “Considering that…copyright granted in USA in respect of the six characters of the ‘Rainforest Family’ would also extend to India in terms of Section 40 of the Copyright Act…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… as respect the trademark violation of its word mark ‘KICK AND PLAY’ as also the design mark, this Court deems it fit to hear the defendants in the first instance before passing any ad-interim injunction…till the next date of hearing, an ex-parte ad-interim injunction is granted in favour of the plaintiff…on the plaintiff providing the URLs within three days, defendant No.4 will remove the listings from its platform which relate to the advertisement and sale of the products which violate the copyright of the plaintiff.”
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