Here’s why the Delhi HC has advised the makers of Barbie dolls to “chill”

The Delhi High Court yesterday issued notice to the makers of the upcoming film Tera Intezaar for using the word BARBIE in a song without authorization from Mattel Inc, the owners of the trademark ‘Barbie’..The Court, however, refused to grant the plaintiffs an ex-parte temporary injunction in an application pleading for the same. While doing so, the single judge bench of Justice Rajiv Sahai Endlaw made some interesting observations..Taking a cue from a United States Court of Appeal, Justice Endlaw at the outset advised the parties to “chill”..The plaintiffs pleaded that Barbie reflects an aspirational figure on which the consumers project their dreams and aspirations, and that girls across the globe identify Barbie as a role model..It was argued that the lyrics of the impugned song are suggestive of an adult woman who is sexually attractive and enticing..“The Barbie girl in the impugned song has been impersonated by an actress who is a prominent figure from the adult entertainment industry and the contents of the impugned song/its video are not suitable for children and are provocative and inappropriate for younger girls and children, tarnishing and degrading the distinctive quality of the mark ‘BARBIE” .”.It was contended by the plaintiffs that the use of Barbie by the defendants in their song amounts to infringement and dilution of the plaintiffs’ trademark..Appearing for the plaintiff, Advocate Pravin Anand also moved an application for in camera hearing of the matter, stating that,.“The Suit pertains to a highly confidential subject matter which may invoke media attention leading to distorting/misrepresenting of facts and the proceedings before this Court and in the absence of media reporting the parties may also be more receptive to a settlement.”.It was further contended that any kind of publicity would prejudicially affect the plaintiffs and would also serve the purpose of the defendants by bringing undue publicity to their film and the song..Justice Endlaw dismissed the application for an in camera hearing and observed,.“I fail to see the purpose in the ex-parte hearing also being in camera if ultimately the dispute is to come out in the open and reporting in the media thereof cannot be prevented.”.He also brought up the song Barbie Girl by the band Aqua and asked the plaintiffs whether they took any action against it. The judge, in his order, proceeded to state the lyrics of that song..“The said song by the band “AQUA” is also found to have contents as “Hi, Barbie…….Hi, Ken…….. Do you wanna go for a ride?…….. sure ken!…… jump in…….I’m a Barbie girl……I am a Barbie girl in the Barbie world………..you can brush my hair…….undress me everywhere….I’m ablond bimbo girl in a fantasy world……dress me up, make it tight, I’m your dolly…feel the glamour in pink…..kiss me here, touch me there, hanky panky…….you can touch, you can play, if you say, “I’m always yours”, with uu-oooh-u-u.‟s and ah-ah-ah-yeah‟s interspersed.”.It was brought to the Court’s notice that the plaintiffs indeed took action against the song in the US District Courts on similar grounds, albeit unsuccessfully..The plaintiff had then appealed to the United States Court of Appeal, which also held that music companies’ use of the BARBIE mark in a song was not an infringement of the toy manufacturer’s trademark associated with the doll. The court had also advised the plaintiffs “to chill”..In this background, Justice Endlaw in his order noted,.“Barbie is seeking in India what has been denied to it in the Court of its origin.” .The Bench also made observations regarding the freedom of expression and protests seeking ban of films..“The newspapers and the stories on the electronic news media in the country are today widely broadcasting the demand by one section of the society for a ban to another film. The petitions filed in the Supreme Court in this regard have not met with any success and have been disposed of as premature owing to the CBFC having not granted certificate to the film as yet. I am of the opinion that grant of any order (ex parte) as sought is likely to send a wrong signal to the public at large.” .Though the Court denied the plaintiffs ex parte relief, it noted that the pleas may be considered at the notice stage. Therefore, it issued notice to the defendants..“It will be open to the counsel for the plaintiffs to, with or without a copy of this Order, call upon the defendants to delete the word “BARBIE” from the impugned song and to notify the defendants that on their failure to do so, the plaintiffs would be entitled to damages from the defendants.”.Read Order:. Image taken from here.