Dongre v. whirlpool

Citation : 1996 (16) PTC 583 (SC)

Facts: 

The respondents (initially plaintiffs) are the original and earlier users of trademark "WHIRLPOOL" for their electrical goods including washing machines since the year 1937. They got their trademark registered in the year 1956-57 in India. These registrations were renewed periodically. However, in 1977. the registrations in India lapsed on account of failure to apply for renewal Later in the year 1988. the appellants (initially defendants) applied with the Registrar of Trade Marks for registration of the trademark WHIRLPOOL for certain goods including washing machines. Post this application information was released by advertising in the trademark journal and accordingly the respondents filed an objection. The registrar dismissed the objection and allowed the plaintiff's application for registration on the grounds of the proposed user. The respondents filed an action for passing off and grant of an interlocutory injunction.

Procedural History:

 After the grant of registration to the appellants in the year 1992. the respondents filed an action for passing off and grant of an interlocutory injunction. A temporary injunction was granted by the learned Single Jude of the Delhi High Court in an original suit by order dated 319 October 1994, which has been affirmed on appeal by the Division Bench by its order dated 21.04.1995. Hence, aggrieved by the decision, the appeal was filed in the Supreme Court.

Issue:

Whether interlocutory injunction can be granted in a passing off action even against the proprietor of a registered trade mark?

Analysis: 

The Court noted that Whirlpool Corporation had been the prior user of the trademark and were associated with it since the year 1937 whereas the appellants only applied for it in the year 1988. The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretense that they are the goods of another man. The Court further observed that since the year 1937, Whirlpool Corporation has registered itself in 65 countries and has a large scale business. It was further noted that though Whirlpool products were only sold in US embassy and few other United States offices in India but the brand

"Whirlpool' had been frequently advertised in leading international magazines having circulation in India and as a result the brand was gaining reputation not just in the United States but throughout the world including India. As a result Whirlpool Corporation acquired trans-border reputation and goodwill throughout the world and people began associating washing machines and other electronic goods with the trademark Whirlpool'. It further noted that buyers were likely to be deceived or confused as to the origin and source of the goods with appellants selling their goods marked a 

"Whirlpool and as a result the respondents are likely to suffer irreparable injury as the products sold by appellants were not of the same engineering standards and did not give the same quality of performance as the respondents' machines.

Conclusion:

The Court affirmed the order of the Division Bench of the High Court and dismissed the appeal. It noted that the decision of the trial court and the High Court was based on settled principles of law. Therefore there was no ground to interfere with the grant of an interlocutory Injunction.