This post was first published on 15th November, 2011.
Zippo Manufacturing Company v. Anil Moolchandani & Ors. , High Court of Delhi
Pronounced on 31st October, 2011
In February 2006 the plaintiff came across the defendant selling counterfeit lighters with the Zippo mark in the same shape and it was a verbatim imitation of the original Zippo lighters. Zippo, a company based out of USA claims to be a world leader in the manufacture and distribution of lighters alleged to be a well-known trademark. Keeping in mind the damage that can be caused to their company; they sent a notice to the defendants who promptly agreed to stop selling and manufacturing similar lighters. In June 2006 the plaintiffs became aware of the fact that the defendants hadn’t stopped their business and sought an injunction for the same.
The Honourable Court in the course of decision making cited many judgments of which these were very prominent.
a) MRF Tyres Ltd. v. Metro Tyres Ltd. – The Court held that though all tyres were black and circular, tread pattern and other features of arrangements were prominent parts of the design. And since the plaintiff had a distinct tread pattern, the defendants were asked to stop the manufacture of their tyres.
b) Gobatschow Wodka VG v. John Distilleries Ltd. – The issue, in this case, was the shape of the bottle and since the plaintiff’s had a very unique shape of the bottle and it was a part of their goodwill, the judgment was in their favor.
The Trademark Act now statutorily recognizes shape i.e. the form in which it is marketed, packed and the combination of colours used in doing so as constituent elements of any product. In the instant matter, the plaintiff company has been using this mark for a considerable period of time and its 3-dimensional shape of lighters has become very popular. Another notable point is that they are an established one dealing with this business in over 120 countries through authorized dealers. They also have a registered trademark and any infringement or manufacture of inferior quality lighters could cost them their reputation and goodwill.
The Court granted a permanent injunction to the plaintiffs based on the above reasons and restrained the defendants from selling, manufacturing or even advertising the same products. Plaintiffs were also entitled to recover 5 lacs from defendant no.4, pendent lite and future interest of 6% p.a. on the amount of damages but there was no order as to costs.
Contributed by Nikita Hemmige
Image from here