ZIPPO MANUFACTURING COMPANY v. JASWINDER SINGH & ANR.

1. The plaintiff has instituted this suit (i) for permanent injunction restraining the two defendants from using the plaintiff’s registered trademark ZIPPO in an unauthorized manner on the product or the casing or on the pamphlets or in any other manner, amounting to infringement of plaintiff’s registered trademark under No.562863 and 562866; (ii) for restraining the two defendants from passing off their products as that of the plaintiff; and, (iii) for the ancillary reliefs of delivery and rendition of accounts and damages, pleading:- (a) that the plaintiff is a company organized and existing under the laws of the State of Pennsylvania, USA and is a world leader in manufacture and trade of lighters under the invented and wellknow trademark ZIPPO; (b) that the plaintiff has extended the use of the said trademark to various other products including Desk Accessories, writing instruments, Travel accessories, Golf accessories, money clip, key holder, Tape Measure Suspenders, Work-wear, outdoor 2014:DHC:2026 products, shoes, belts etc.

(c) that the plaintiff does business in India through its sole agent and a local office;

(d) that the plaintiff has invested extensively in the said trademark which is also registered in India in Classes 3,4,8,11,16, 25 & 34; and, (e) that the defendants no.1&2 were engaged in selling counterfeit ZIPPO lighters in Delhi.

2. The suit was entertained and vide ex parte ad interim order dated 13th March, 2006 the defendants restrained from dealing in ZIPPO branded lighters and from infringing the trademark of the plaintiff in any manner whatsoever.

3. On another application of the plaintiff a Court Commissioner was also appointed to visit the premises of the defendants and to prepare an inventory of the infringing goods.

4. Both the defendants filed separate written statements contending that they were small vendors and were selling the goods purchased from others and unaware of the rights of the plaintiff and undertook to stop doing the same. The defendant no.2 Shri Sunil Kumar also took a plea that as per his information, his goods were genuine ZIPPO products.

5. On the pleadings of the parties, the following issues were framed on 10th April, 2008:-

6. The suit was adjourned from time to time for enabling the defendant no.2 to compromise with the plaintiff. Ultimately the suit between the plaintiff and the defendant no.2 was compromised and disposed of on 16th October, 2012 and now survives only qua the defendant no.1. The plaintiff has led its ex parte evidence. I have heard the ex parte argument of the counsel for the plaintiff.

7. As far as the defendant no.1 is concerned, he has as aforesaid not controverted the claim of the plaintiff. The plaintiff is thus found entitled to the relief, in so far as of injunction against the defendant no.1. As far as the claim of the plaintiff for damages against the defendant no.1 is concerned, the plaintiff, in the compromise aforesaid, having given up the claim for damages against the defendant no.2, I am not inclined to award any damages against the defendant no.1. Moreover it appears that the defendant no.1 was a small vendor and immediately on receipt of summons of the suit agreed not to carry on the sale of the products of the plaintiff. Thus no case for grant of any of the ancillary reliefs against the defendant no.1 is made out. The counsel for the plaintiff has argued that the trademark of the plaintiff has been held to be well-known trademark and the plaintiff has also led evidence to the said effect and a finding thereof be returned in this judgment also. However in an ex parte proceedings, I am not inclined to do so.

8. The suit is decreed in favour of the plaintiff and against the defendant no.1 in terms of prayer (i) & (ii) of the plaint. The defendant no.1 to however pay costs of the suit to the plaintiff. Counsels fee assessed at Rs.25,000/-. Decree Sheet be prepared.