Name of the Case- N. R. Dongre and Others v/s Whirlpool Corporation and Anr 

Civil Appeal No. 10703 of 1996 Decided On, 30 August 1996 

At, Supreme Court of India By, HON’BLE JUSTICE J. S. VERMA Published In:- Published In 1996 (67) ECR 232, 1996 (2) ARBLR 488, 1996 (6) Scale 276, 1996 (5) SCC 714, 1996 (16) PTC 583, 1996 AIR (SCW) 3514 

ISSUE-

Whether Whirlpool Corporation, despite the lapse of its Indian trademark registration and absence of actual goods in the Indian market at the time, could obtain an injunction in a passing off action against the Indian defendants who had registered and begun to start using the ‘WHIRLPOOL’ mark in India.

RULE-

In India, an action for passing off always safeguards the goodwill of a company against misrepresentation and takes effect even where the infringer has a registered trademark. The above principle is embedded in Section 27(2) of the Trade Marks Act, 1999, which maintains the Common law remedy of passing off irrespective of registration. For a passing-off interlocutory injunction to issue, courts usually consider three fundamental ingredients: (i) a prima facie case, (ii) balance of convenience, and (iii) irreparable injury. Further, according to trademark jurisprudence, a prior user has better rights than a subsequent registrant. A transborder reputation without physical presence or direct sales within India can substantiate such claims if the mark has become distinctive and has built up goodwill in the Indian market. Courts also believe that mere delay, without proof of acquiescence or abandonment, does not preclude a claim to injunction. The appellate judges will not interfere with a trial court’s discretion in issuing temporary injunctions unless the order is perverse or patently unreasonable.

ANALYSIS-

In such a case, the Supreme Court scrutinized the facts very carefully and ruled that Whirlpool Corporation had made a robust prima facie case in light of its earlier use and worldwide reputation of the “WHIRLPOOL” mark, even though its Indian registration had lapsed. The Court noted that the brand name had gained popularity in India through massive promotional coverage in internationally published magazines like Reader’s Digest and Newsweek, which were available in India. While Whirlpool had not been importing its washing machines directly for sale in the Indian market, it had made some small sales (e.g., to the U.S. Embassy in India), and the brand had gained considerable recognition. The defendants’ application of the mark, relying merely on a “proposed to be used” registration, had no commercial justification and seemed more an effort to free ride on Whirlpool’s international goodwill. The Court also observed that the defendants had before used other trade names and did not state why they changed to “WHIRLPOOL.” Further, Whirlpool had responded promptly by opposing the registration, Proving rectification proceedings, and initiating civil action. Acquiescence or unreasonable delay was shown nowhere. In view of the high likelihood of consumer confusion and damage to Whirlpool’s reputation  particularly because the defendants’ products were of lower quality and priced much lower, the Court was of the opinion that irreparable harm would result if the injunction was not issued. The balance of convenience was also strongly in favor of Whirlpool, since the defendants could still sell their products under different names without substantial commercial hardship.

CONCLUSION-

The Preliminary injunction given in favor of Whirlpool was upheld by the Supreme Court. It held that Whirlpool’s transborder reputation, prior use, and common law rights in India were enough to enjoin the defendants, even if the latter was registered. The issuance of the injunction was a valid exercise of discretion, and the same being upheld by the High Court called for no interference. The appeal was dismissed with costs of ₹10,000.