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Zippo Manufacturing Company vs Anil Moolchandani & Ors. on 31 October, 2011


ZIPPO MANUFACTURING COMPANY ….. Plaintiff Through: Mr. Pravin Anand, Advocate

and Ms. Tanya Verma, Advocate


ANIL MOOLCHANDANI & ORS. ….. Defendants Through: None.



1. Whether Reporters of local papers may

be allowed to see the judgment? Yes

2. To be referred to the Reporter or not? Yes

3. Whether the judgment should be reported Yes in Digest?


1. The plaintiff is a company registered in U.S.A and claims to be world leader in manufacture and trade of lighters, which it sells under its invented trademark Zippo, which is alleged to be well-known trademark. The use of the trademark Zippo extends to other products as well such as desk accessories, writing instruments, travel accessories, outdoor products, golf accessories, money clips, key CS(OS)No. 1355/2006 Page 1 of 23 holders, tape measures, shoes, belts and suspenders, etc. The design of the trademark Zippo has the lighter resting in a rectangular casing, split into two parts and the bottom part has a matching flip-top part welded into a hinge. Both the parts are rectangular in shape with rounded edges and corners to hold the flip-top in a fully opened or shut position. The lighter incorporates a spring and cam arrangement that enables the user to operate the top with on hand. An important feature of the lighter is the chimney or windscreen enclosing the wick with round air holes punched into its sides in horizontal rows of three-two-three formation. It is claimed that the shape of the lighter as well as well as the windscreen chimney are unique and have acquired a secondary meaning to denote the plaintiff?s cigarette lighters. It is also alleged that the plaintiff has been manufacturing and selling lighters across 120 countries and by virtue of such continuous and longstanding user, the mark has acquired the status of well- known trademark. It is also alleged that the plaintiff has invested the huge sums of money in promoting and publicizing the sale of goods using the trademark Zippo. It is also alleged that the goods under the trademark Zippo CS(OS)No. 1355/2006 Page 2 of 23 have been available in India at duty free shops, embassies, consulates and have been regularly brought into the country by tourists and have been imported under permitted baggage rules. It is claimed that the trademark Zippo is well-known to Indian consumers due to their exposure to advertisements for various products under the trademark Zippo in prominent magazines including in-flight magazines in domestic and international airlines operating in and from India. The plaintiff also claims to be the proprietor of a registration for the 3-dimensional shape of its lighters by registration No. 714368 since 10th May, 1996.

2. It is alleged that in February, 2006, it was brought to the notice of the plaintiff that defendant No. 2 was selling counterfeit Zippo lighters from its various outlets in Delhi and those lighters not only bore the word mark Zippo, but also constituted infringement of plaintiff?s shape mark and were in fact verbatim imitation of the product of the plaintiff. In reply to a notice sent to it by the plaintiff, defendant No. 1 gave a categorical undertaking to remove the infringing stock from all shops and not to sell any objectionable counterfeit Zippo lighters in future. However, in first week of June, 2006, the plaintiff discovered that the CS(OS)No. 1355/2006 Page 3 of 23 defendants were continuing to sell the counterfeit products. Such counterfeit lighters were purchased by the representative of the plaintiff from defendants No. 3 and 4. It is alleged that the activities of the defendants, besides infringing the registered trademark of the plaintiff, also amount to passing off their cheap quality lighters as those of the plaintiff and sale of such counterfeit product has already caused unquantifiable losses to the plaintiff. The plaintiff has accordingly sought injunction, restraining the defendants from manufacturing, selling, offering for sale or advertising lighters which are deceptively similar to that of the plaintiff and thereby infringing its registered shape mark under registration No. 714368.

3. During the pendency of the suit, the suit was decreed against defendants No. 1 and 2 on 8th December, 2008 in terms of their compromise with the plaintiff and they were restrained from (i) importing, marketing, selling or offering for sale or using the plaintiff?s registered trademark ZIPPO in an unauthorized manner on the product or the casing, or in any other manner in the course of trade, amounting to infringement of plaintiff?s registered trademark under No. 562866; (ii) importing, marketing, CS(OS)No. 1355/2006 Page 4 of 23 selling or offering for sale cigarette lighters infringing the plaintiff?s registered shape mark under No. 714368; (iii) using the logo of the plaintiff in an unauthorized manner on the product or in any other manner amounting to passing off;

4. The suit against defendant No. 3 was also disposed of in terms of its settlement with the plaintiff contained in IA No. 9109/2009. Under this settlement, defendant No. 3 undertook not to purchase ZIPPO lighters from any other person other than official distributor of plaintiff in India and not to file any application for registration of the trademark ZIPPO or any other mark similar to the aforesaid mark of the plaintiff.

5. The plaintiff has examined two witnesses by way of ex parte evidence. PW-1 Mark Paup, is the Vice-President (Sales and Marketing) of the plaintiff-company. He has supported, on oath, the case setup in the plaint and has stated that goods under the trademark ZIPPO have been available in India at duty free shops, embassies and consulates and have been brought into the country regularly by tourists or have been imported under permitted baggage rules. He has further stated that the goods of the CS(OS)No. 1355/2006 Page 5 of 23 plaintiff are available in India at a number of retail outlets in major cities. PW-2 J.P. Sharma has stated that he was employed by the plaintiffs to investigate whether defendant No. 4 was dealing in counterfeit ZIPPO lighters and in June, 2006, he visited the premises of defendant No. 4 and purchased lighters bearing the trademark ZIPPO against cash memo, copy of which is annexure

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