In a recent ex-parte matter before the Delhi High Court, a case of Trademark dilution was filed by a famous toy maker for mark ‘BARBIE’ against the use of the word in the song ‘Barbie Girl’ of a recent Bollywood film.
The Plaintiff had also filed an application for a conducting the proceedings ‘in camera’ contending that the suit pertained to a “highly confidential subject matter” which may lead to distorting/misrepresenting of facts and would prejudicially affect the Plaintiff. However, citing reasons that orders passed in suit cannot be prevented from being uploaded on Court’s website, request for ‘in camera’ proceeding was dismissed by the Court.
On the matter of trademark dilution, the Plaintiff contended that the contents of the said song / video were not suitable for children and the lyrics were provocative, therefore, tarnished and degraded the distinctive quality of the mark “BARBIE” which has over the years and still continues to remain a symbol of American girlhood.
In this regard, reference was also made to the famous song “Let’s go party”, also with the name “BARBIE” wherein the US Court of appeal had held that the music companies’ use of the word ‘BARBIE’ is not infringement of a toy manufacturer’s trademark associated with the doll and trademark rights do not entitle the owner to quash an unauthorized use of the trademark by another who is communicating ideas or expressing points of view.
It was further held that the law has constituted Central Board of Film Certification (CBFC) to adjudge films and the need if any for imposing ‘prior restraints’ which otherwise are at serious odds with the fundamental right enshrined in the Constitution of speech and expression.
Therefore denying the request for grant of ex-parte order restraining the defendant form releasing the film, the Court further reasoned that “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. I am of the opinion that grant of any order as sought is likely to send a wrong signal to the public at large.”
However, the Court permitted the plaintiffs that it would be open to them to, with or without a copy of the 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.
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