Delhi High Court
Zippo Manufacturing Company vs Jaswinder Singh & Anr. on 16 April, 2014
*IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 16th April, 2014
+ CS(OS) No.442/2006
ZIPPO MANUFACTURING COMPANY ..... Plaintiff
Through: Ms. Prachi Agarwal, Adv.
Versus
JASWINDER SINGH & ANR. ..... Defendants
Through: None.
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
RAJIV SAHAI ENDLAW, J
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 well-
know 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
CS(OS) 442/2006 Page 1 of 4
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:-
"1. Whether the plaintiff is proprietor of trade mark
„Zippo‟? OPP.
2. Whether the defendant has committed infringement
of the trade mark of the plaintiff registered under
nos.562863 and 562866, if so to what effect? OPP.
CS(OS) 442/2006 Page 2 of 4
3. Whether the defendant is guilty of passing off its
goods as those of plaintiff‟s, if so, to what effect? OPP.
4. Whether the plaintiff is entitled to a decree of
damages of Rs.20 lacs on account of infringement /
passing of the goods of the plaintiff by the defendant?
OPP.
5. Whether the plaintiff is entitled to the permanent
injunction as claimed? OPP.
6. Relief."
Finding that the defendant no.1 had not been appearing for quite
many previous dates the defendant no.1, vide the same order also proceeded
against ex parte.
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.
CS(OS) 442/2006 Page 3 of 4
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.
RAJIV SAHAI ENDLAW, J.
APRIL 16, 2014
pp
