N.R. Dongre & Ors. v. Whirlpool Corporation & Anr.

Relevant Acts and provisions

Trade and Merchandise Marks Act, 1958

Section 27(2)

Provisions considered: Passing off action preserved independently of registration under the Trade and Merchandise Marks Act, 1958.

Brief facts

Whirlpool Corporation had used the mark WHIRLPOOL internationally since the 1930s, but its Indian registration had lapsed by non-renewal. Its appliances continued to be advertised in international magazines circulating in India and supplied to select institutional buyers. The appellants obtained registration of WHIRLPOOL in India for washing machines in 1986 and marketed machines under that mark. Whirlpool Corporation sued for passing off, and the Delhi High Court, at first instance and in appeal, granted an interim injunction restraining the appellants pending trial.

Issues before the Court

1. Can a foreign proprietor maintain a passing off action in India despite the lapse of its Indian registration?
2. Does advertisement and spill-over reputation without substantial local sale establish the goodwill necessary for passing off?
3. Was the grant of an interim injunction justified?

Court's findings

The Court held that registration of a trade mark is not a pre-requisite for maintaining an action for passing off, and that the reputation of a mark may transcend the country in which the goods are actually sold, provided the proprietor can show that knowledge and goodwill in the mark exists among a substantial section of purchasers in the country where protection is sought.

The Court found that extensive advertisement of the mark in internationally circulated magazines available in India, together with evidence of supply of the machines to certain institutional buyers in India, was sufficient at the interim stage to establish a transborder reputation and goodwill among the relevant public in India even without large-scale local sale.

The Court affirmed the concurrent findings below that the appellants' use of an identical mark for identical goods was likely to cause confusion and to injure the goodwill built up by the respondent, and that the balance of convenience favoured continuation of the interim injunction pending disposal of the suit.

Subsequent history: The scope of transborder reputation recognised here was qualified by the Supreme Court in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1, which held that a plaintiff relying on transborder reputation must still prove actual

Decision

Appeal dismissed with costs; the interim injunction restraining the appellants from using the mark WHIRLPOOL was confirmed.

Keywords

Goodwill Interim Injunction Passing Off Transborder Reputation Well-known Trade Mark