By Lucy Rana and Priya Adlakha
Hon’ble Mrs. Justice Mukta Gupta, of the Delhi High Court passed an order dated October 13, 2020 in CS (COMM) NO. 447 of 2020 titled as ‘Mattel Inc. v. Present Enterprises and Ors’ and directed the Defendant No.4, Flipkart to remove the listings which relate to the advertisement and sale of the products which violate the copyright of the Plaintiff i.e. Mattel in the six characters of the ‘Rainforest Family’.
Mattel Inc. v. Present Enterprises and Ors
Mattel (hereinafter referred to as the Plaintiff) is in 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 claims to have 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’ which consists of Rainforest Elephant, Rainforest Lion, Rainforest Giraffe, Rainforest Girl Monkey, Rainforest Parrot & Rainforest Turtle. The same are illustrated below:
As per the Plaintiff, the Plaintiff in the year 2017, launched the ‘Infant to Toddler Rocker’ with ‘Rainforest Family’ characters featuring therein which products were launched in India in 2018. Further, the Plaintiff applied for registration of its trademark ‘KICK AND PLAY’ in Class-28 in India on August 13, 2020 and applied for the registration of its shape mark of its ‘KICK AND PLAY’ baby gym in Class-28 in India on September 9, 2020.
In the present suit, the Plaintiff claims 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’s by using trademark ‘KICK AND PLAY’ as also the violation of the shape mark of its ‘KICK AND PLAY’ baby gym.
The Plaintiff argued on the provisions of Section 40 of the Copyright Act, 1957 that deals with the power to extend copyright to foreign works. Plaintiff submitted that the series of the six cartoon animal characters were granted copyright in the jurisdiction of the United States of America and by way of the official order dated March 24, 1999, would also extend to the Indian jurisdiction in respect of International Copyright.
The Court observed that 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 extent to India in terms of International Copyright order notified in the Official Gazette on March 24, 1999. In view thereof, the Hon’ble Court was pleased to pass the following order in favour of the Plaintiff:
- Ex-parte interim injunction granted by the Delhi High Court with respect to Copyright –The Hon’ble Court granted an ex-parte ad-interim injunction in favour of the Plaintiffs and against the Defendants. Nos. 1, 2, 3 and other Defendants sought to be impleaded as John Doe as Defendant No.5, against violating of the Plaintiff’s Copyright in six animal characters of the ‘Rainforest Family’ in any manner till the next date of hearing. It may be noted that the Hon’ble Court was of the view that any ad-interim injunction with respect to trademark violation of Plaintiff’s word mark ‘KICK AND PLAY’ as also the design mark, to be given only after the Defendants have been granted an opportunity of hearing.
- Flipkart (Defendant No.4) ordered to remove listings of the products infringed – In addition to the injunction ordered, the Court also directed Defendant No. 4, namely the leading e-commerce platform, Flipkart to remove listing 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’ within 48 hours from the date of the said order.
At present, Flipkart, i.e. after complying with the order dated October 13, 2020 in the present matter, preferred an application under Order 10 Rule 1 seeking deletion of its name from array of parties as it has complied with the direction of the Court. The said application is still pending adjudication before the Hon’ble Delhi High Court.
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