N.R. Dongre and Ors. vs. Whirlpool Corpn. and Anr.
1996 PTC (16) 583 (SC)
- The Whirlpool Corporation, i.e. the Plaintiff No. 1 is a multinational corporation incorporated in U.S.A. and had an established business in the manufacture, sale, distribution and servicing of washing machines of all kinds.
- Plaintiff No. 1 is the successor of a trade mark ‘WHIRLPOOL’ since 1937. By 1957 ‘WHIRLPOOL’ was a leading trade mark and name in the United States and Canada in relation to washing machines. The Plaintiff No. 1 had through itself or though it’s subsidiaries 2000 trade mark registration all over the world spanning 65 countries.
- The Plaintiff No. 1 had obtained registration of the Trade Mark ‘WHIRLPOOL’ in India in the year 1956 in respect of clothes dryers, washers, dishwashers, etc. In Classes 7, 9 and 11 However in 1977, registrations in India lapsed on account of failure to apply for renewal.
- In 1987, Plaintiff No. 1 entered into joint venture with the Plaintiff No. 2, i.e. TVS Whirlpool Ltd. (a limited Company incorporated in India) and the machines were sold by Plaintiffs under the TVS brand using the phrase ‘in collaboration with Whirlpool Corporation’. The Plaintiff No. 2 was licensed by the Plaintiff No. 1 to use the trade mark and trade name ‘WHIRLPOOL’. Before this, the products bearing the marks ‘WHIRLPOOL’ were being sold by Plaintiff No. 1 to US Embassy in India.
- Sometime, in August, 1986 the Defendants filed applications for registration of the Trade Mark ‘WHIRLPOOL’. When the said application was published, the Plaintiffs opposed registration of the same. However, opposition of the Plaintiff was dismissed by the Assistant Registrar on grounds of non-use and non-reputation of Plaintiffs’ mark ‘WHIRLPOOL’ in India and thus, no likelihood of confusion arises if the Defendants were permitted to use the same.
- The Plaintiffs filed an appeal against the said order which was pending before the Hon’ble Court. After, the Trade Mark of the Defendant was registered, the Plaintiffs filed petition under Section 46 and 56 of the Trade Marks Act, 1958 seeking cancellation of registration.
- In July, 1994 plaintiffs came across an advertisement of defendants soliciting dealers for ‘WHIRLPOOL’ washing machines. Thereafter, Plaintiffs purchased a washing machine of the Defendant bearing the mark ‘WHIRLPOOL’ which was found to be of inferior quality to the Plaintiff’s washing machine.
- Thereafter, the Plaintiffs instituted a suit against the Defendants bearing CS(OS) No. 1705 of 1994 in the Hon’ble High Court seeking permanent injunction on the Defendants from using the mark ‘WHIRLPOOL’.
- Considering, the fact that if the Plaintiffs has no sales in India can it be said, that the Plaintiff had acquired a Trans-Border Reputation and as a corollary to that Trans-Border Reputation can an action by Plaintiffs for passing off be maintainable or should their goodwill/reputation be confined to territories of their actual use?
- Whether the Plaintiffs who are not registered proprietors of trade mark ‘WHIRLPOOL’ in respect of washing machines, can maintain an action for passing off against the Defendant, who is a registered proprietor of the same mark for same goods?
SINGLE JUDGE BENCH
ISSUE NO. 1 – The learned Single Judge held the issue in favour of the Plaintiffs and relied on the following:
- Plaintiff No. 1’s sales in India to US Embassy and documents pertaining to it’s prior use, registrations, etc. Globally.
- International magazines having circulation in India containing advertisements of the products of the Plaintiffs bearing the mark ‘WHIRLPOOL’.
- Further, the Learned single judge relied on certain precedents on the said question of law, such as:
- William Grant & Sons Ltd. v. McDowell & Co. Ltd.;
- Kamal Trading Co. V. Gillette UK Ltd.; (1988) 1 PLR 135
- WWF International v. Mahavir Spinning Mills.; 56(1994) DLT271
ISSUE NO. 2 – The learned Single Judge held the issue in favour of the Plaintiffs and relied on the following:
- Section 28 of the Trade Marks Act, 1958 read with Section 27(2) of the Trade Marks Act, 1958 (So as to hold that irrespective of Registration of Trade Mark and factum of exclusive use as provided in Section 28 to the registered proprietor, the same right is “subject to other provisions of the Act”. Other provisions include Section 27(2) which is worded as a non-obstante clause and over-rides all provisions of the act including Section 28. Thus, a registration of a Trade Mark is irrelevant in an action for passing off.)
- Further, the Learned single judge relied on earlier precedents on the said question of law, such as:
- Century Traders v. Roshan Lal Duggar & Co.; AIR 1978 Delhi 250
- Wander Ltd. v. Antox India (P) Ltd.; 1991(11)PTC1(SC)
Thus, the learned Single Judge (Delhi High Court) by order dated 31.10.1994, granted a temporary injunction in favour of the plaintiffs relying on the following grounds, other than the ones mentioned above:
(i) Prior registration of the mark ‘WHIRLPOOL’ in India by the Plaintiffs in 1956 and continuous till 1977 which is prior to earliest claim by Defendant from 1986.
(ii) No reliable evidence of defendants of the Defendants having marketed their washing machine s for any considerable length of time prior to date of grant of injunction.
(iii) Balance of convenience in favour of the Plaintiff as the machines of the Defendant were of inferior quality.
Note: It is also pertinent to add that the Defendants had also raised the defences of abandonment of the mark by the Plaintiffs as well as delay, laches & acquiescence by the Plaintiffs. All these contentions of the Defendants were negativated by the Learned single Judge as the Plaintiffs were diligently following up with registrations of their marks, had filed oppositions, appeals, rectifications and the present suit to protect their mark,
DIVISION BENCH (FAO(OS) No. 262 of 1994)
On Appeal, the Division Bench of the High Court came to the conclusion that there was no reason to interfere with the discretion exercised by the learned Single Judge in granting the temporary injunction. Accordingly, the defendants’ appeal was dismissed. The Division Bench also, additionally noted in dismissing the appeal that there was no plausible & convincing explanation by the appellants as to how they came to adopt the mark ‘WHIRLPOOL’.
SUPREME COURT (Civil Appeal No. 10703 of 1996)
In the Special Leave Petition the Supreme Court finally upheld the decision of the Learned Single Judge as well as the Division Bench affirming the decision of the single judge and dismissed the appeal of the Defendants with costs.
Author(s): Payal Lamba & Ankit Rastogi