Citation: 1996 PTC (16) 583 (SC)
Court: The Supreme Court of India
Bench: Justice JS Verma and Justice K Venkataswami
Facts:
The Whirlpool Corporation (Whirlpool Corp.), an American entity and TVS Whirlpool, an Indian company filed a suit against N.R Dongre and others (Defendants) in India at the Delhi High Court. The Appellant-Defendants were using the name "Whirlpool" (mark) in India for manufacturing and selling washing machines. Whirlpool Corp. claimed that they were the prior users of the mark and there was a trans-border reputation indicating that any goods marketed with the use of the mark gave an impression of it being marketed by Whirlpool Corp.
During the initiation of the suit, Whirlpool Corp. had failed to renew its trademark registration in India. However, N.R. Dongre & Others, during this period, had obtained the registration of the mark "Whirlpool" in India. But, Whirlpool Corp. constantly advertised their goods in India and thus opposed the registration of the mark by the defendants. But the Assistant Registrar dismissed the opposition and granted the registration to N.R. Dongre and others.
The suit for passing off was formerly filed by Whirlpool Corp. at the Delhi High Court before the Single Judge. This went on an appeal to the Division Bench of the Delhi High Court. Both the benches granted a temporary injunction against the use of the mark "Whirlpool" by N.R. Dongre and others. Hence, they approached the Supreme Court.
Issues:
Whether a non-registered prior user of a trademark can obtain an injunction against a competing business that is the registered proprietor of the same or similar trademark in India?
Whether Whirlpool was a well-known mark and had acquired a trans-border reputation?
Laws Involved:
Passing off (common law remedy); Trade and Merchandise Marks Act 1958
Analysis:
The Single Judge of the Delhi High Court decided the matter in favor of Whirlpool Corp. The Judge held that the issue of registration was immaterial in cases of passing off. Further, Whirlpool Corp. had presented documents about its prior use which acted in their favor for obtaining temporary injunction.
The Division Bench of the Delhi High Court also ruled in favor of Whirlpool Corp and held that the respondent could not justify using the trademark innocently. The Court observed that the petitioner widely used the trademark prior to the respondent's use. The Court looked to the evidence of the publications which contained Whirlpool Corp.'s advertisements to support the existence of its use. Thus, the Division Bench found that the trademark 'Whirlpool' had become well-known and had acquired reputation and goodwill in India. Finally, the Division Bench stated that a product and its trademark may exceed its geographical boundary not only through importation but also through advertisements.
At the Supreme Court, the defendants claimed that they were the registered proprietors of the trademark and would remain as such pending the passing-off action. However, the Supreme Court found that harm to Whirlpool Corp.'s reputation and goodwill would be irreparable since the trademark 'Whirlpool' had long been associated with their goods. Further, the Supreme Court did not find any appropriate reasons to alter the decision of the Delhi High Court and ruled in favor of Whirlpool Corp.
Conclusion:
The Indian Supreme Court in this case for the first time recognized a multinational company's common law right to use its well-known trademark and obtain an injunction. Thus, the concept of trans-border reputation was formulated in this case. The case held that registration of a trademark is not necessary to seek the common law remedy of passing off. It emphasized that the owner of a well-known mark is eligible to seek an injunction in cases of misappropriation.
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