Prathiba M. Singh, J.

1. This hearing has been done through hybrid mode.

2. The present suit has been filed by the Plaintiff-Mattel Inc. against five Defendants namely Present Enterprises, Techhark Trade Inc., Wishkey Retail LLP, Flipkart Internet Private Limited and John Doe/s seeking permanent injunction restraining infringement of trademarks, infringement of copyright, passing off, damages; rendition of accounts; delivery up; etc.

3. The case of the Plaintiff is that it is one of the most well-known toy companies in the world with a long and celebrated history. It was set up in 1945 in Southern California. Initially, the Plaintiff manufactured and sold picture frames, dollhouse furniture, etc., thereafter, it expanded into some of the most well-known brands such as Barbie, Hot Wheels, Fisher-Price, Uno, Scrabble, etc. In the year 1993 the Plaintiff merged with Fisher-Price and since then is one of the biggest manufacturer and seller of children/toddler's toys world-over. The Plaintiff has also been named as one of the Fortune Magazine's 100 Best Companies to work for the sixth year in a row.

4. The Plaintiff entered India in 1986 with its Indian subsidiary Mattel Toys (India) Private Limited. It 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. Claim of the plaintiff is that in the year 2017 the Plaintiff launched the 'Infant to Toddler Rocker with 'Rainforest Family' characters featuring therein. It is submitted that the Plaintiff has spent a substantial amount of money on promotion while launching its product abroad and in India and has won various awards for the same.

5. In the present suit the Plaintiff seeks to enforce the registered word mark 'KICK AND PLAY' and the associated design for children's gyms which has been granted registration as a shape trademark bearing no. 4648189 in class 28. In addition, the Plaintiff also seeks to protect the 'Rainforest Family' of characters protected under copyright law in the USA. Some of the 'Rainforest Family' characters have been granted trademark registrations in Europe. The said registration in USA and Europe are as under:

6. The details of the trademarks which are sought to be enforced by the Plaintiff in the present case are as follows:

i. 'KICK AND PLAY' word mark bearing no. 4608194 in class 28 claiming user from 7th March, 2012.

ii. 'KICK AND PLAY' gym shape trademark bearing no. 4648189 in class 28 claiming user from 7th March, 2012.

iii. Rainforest Family characters which are registered under copyright law of the USA and Europe

7. The grievance of the Plaintiff is that it came across several listings on www.flipkart.com where Defendant Nos. 1 to 3 were offering almost identical 'KICK AND PLAY' baby gyms depicting the Plaintiff's registered 'Rainforest Family' of characters. The comparative images of the Plaintiff's and the Defendant's products are set out below:

8. Accordingly, the Plaintiff prays for permanent injunction and a decree for damages.

9. In the plaint, the stand of the Plaintiff is that Defendant Nos. 1 to 3 are unknown persons and the contesting parties who are offering for sale baby gym products identical to the Plaintiff's products on www.flipkart.com. Flipkart was to merely take down the listings. The averments made against Flipkart are set out below:

"8. That the Defendant No. 4 in the present proceedings, Flipkart Internet Private Limited, is a company incorporated under the laws of India with the registered address Buildings Alyssa, Begonia & Clove Embassy Tech Village Outer Ring Road, Devarabeesanahalli Village, Bengaluru, 560103, Karnataka, India, and the email address puja.a@flipkart.com. The Plaintiff is not seeking any relief against Defendant No. 4 and is cognizant of the fact that it is an internet intermediary. Defendant No. 4 has been impleaded in the present proceedings as it is a necessary party, merely for the purposes of facilitating takedowns in its role as an online marketplace."

10. As per the plaint, in 2017, the Plaintiff filed a case titled Mattel, Inc. Vs. Mahesh & Sons & Anr. Suit (L) No. 121 of 2017 in the Hon'ble High Court of Judicature at Bombay concerning the product series under the mark "Fitch Baby" where products from the Plaintiff's Fisher Price catalogues were reproduced item for item including the colour schemes, the design, the construction and the decorations of the Plaintiff's said products which included the Plaintiff's products under the marks "KICK & PLAY", "Infant-to-Toddler Rocker" and characters of the "Rainforest Family". Vide Order dated 7th April 2017, the Bombay High Court granted an ex-parte ad interim injunction against the Defendant and held that the Defendant therein was attempting to deceive customers as to the source of the products, and to pass off their products as those of the Plaintiff.

11. It is also submitted that the Plaintiff filed a lawsuit titled Mattel, Inc. Vs. Sole Proprietor A.E. Teplov & Anr. Case No. A40-132258/18-27-115 in the Moscow City Commercial Court, Russia concerning replicas of its products under the marks "KICK & PLAY", "Infant-to-Toddler Rocker" and characters of the "Rainforest Family". On 15th August 2018, the said Court was pleased to pass an Order whereby the Defendant therein was "obliged to discontinue the use of the design of the children's products and the characters of the Plaintiff's rainforest family".

12. Initially, when the suit was filed, both the 'KICK AND PLAY' word mark and the shape mark were pending registration. The same were registered during the pendency of the suit. The 'KICK AND PLAY' shape mark was registered and the amendment in respect of the said mark was allowed on 23rd August, 2021. Thereafter, the 'KICK AND PLAY' word mark was also registered.

13. The Defendant Nos. 1 and 2 were proceeded ex parte vide order dated 8th January, 2021. In respect of Defendant No. 3, the suit was decreed on 23rd January, 2023.

14. In the meantime, Flipkart continues to remain a party in this suit and, accordingly, it has moved I.A. 11428/2020 seeking deletion from the array of parties.

15. As on date, the position that remains is that Defendant Nos. 1 and 2 are proceeded ex parte and are not contesting the matter. No written statement has been filed on their behalf.

16. Insofar as Flipkart Internet Private Limited is concerned, the stand is that it would comply with the orders that may be passed by this Court and shall take down listings which may be brought to its notice by the Plaintiff in terms of the order passed by this Court.

17. It is noticed by this Court that the word mark 'KICK AND PLAY' for children's gym has been registered vide application bearing no. 4608194 in class 28 without any conditions for the goods "Toys, playthings, baby gyms". While the words KICK and PLAY separately are dictionary words, the combination of words, having been registered by the Plaintiff, the same deserves to be protected especially in the context of play gyms for children. The settled legal position is that when a descriptive mark is used for a long time and garners sufficient goodwill, it can be said to have acquired secondary meaning.

18. In the present case, since the Plaintiff's have been using the mark 'KICK AND PLAY' for children's gym for over a decade. It also has substantial sales both globally and in India. A perusal of the record would show that the Plaintiff's baby gym product is itself quite a distinctive product which is designed in a particular form along with depiction of characters which are known loosely as a 'Rainforest family' characters.

19. The said gym is replicated by several parties online as is clear from the listings that have been placed on record. Even today, ld. Counsel for the Plaintiff has handed across various listings on www.flipkart.com. where sellers are offering 'KICK AND PLAY' gyms for children which are identical to the Plaintiff's products.

20. Considering the proprietary rights in the 'Rainforest Family' characters which are automatically recognised in India owing to the USA and Europe registrations as also the word mark registration of the mark 'KICK & PLAY', a decree of permanent injunction deserves to be passed in the present suit. The suit is accordingly decreed in the following terms:

(i) A decree of permanent injunction is granted restraining Defendant Nos. 1 & 2 or anyone acting for or on their behalf from manufacturing, selling, offering for sale any baby gyms, under the mark/name 'KICK AND PLAY' on online platforms or in physical shops with the 'Rainforest family' characters or similar characters;

(ii) A decree of permanent injunction is also granted restraining listing of baby gyms of other unknown parties on the Flipkart e-commerce platform bearing the mark 'KICK AND PLAY' which depict the 'Rainforest family' characters or similar characters;

(iii) It is clarified that baby gym products without the mark 'KICK AND PLAY' or the Rainforest characters and similar characters, would not be covered by this injunction. In addition the injunction would not extend to the words KICK or PLAY used disjunctively;

(iv) Whenever the Plaintiff comes across any listings on the Flipkart platform of baby gyms restrained above, they shall notify Flipkart of the specific URLs, which shall take down the same within 72 hours. If any objection is raised by any seller on the Flipkart platform about the said take down action, the said objections shall be forwarded to the Plaintiff, who shall then avail of its remedies in accordance with law against such seller/s.

21. The suit is decreed in the above terms. Decree sheet be drawn accordingly.

22. The Plaintiff does not press the relief of damages and costs.

23. I.A. 11428/2020 filed by Flipkart is disposed of in the above terms.

24. This suit, along with all pending applications, is disposed of.