N.R. DONGRE AND ORS. versus WHIRLPOOL CORPORATION AND ANR.

Citation: [1996] SUPP. 5 S.C.R. 369 · Decided: 30-08-1996 · Supreme Court of India · Bench: J.S. VERMA · Disposal: Dismissed

Judgment (excerpt)

N.R. DONGRE AND ORS. 
A 
v. 
WHIRLPOOL CORPORATION AND ANR. 
AUGUST 30, 1996 
B 
[J.S. VERMA AND K. VENKATASWAMI, J.1.) 
Trade Marks Law : 
Code of Civil Procedure, 1908 : Order 39 Rules 1, 2 and 4. 
c 
Tempormy i11junctiow-Passing off action-Trade mark 'Whirlpool'-
Registratio11 of-Granted i11 favour of defe11dants-Suit in the nature of 
passing-off action brought by plai11tiffs to restrai11 defenda11ts from manuf ac-
twing, selli11g, adve1tising or i11 ally way using trade mark 'Whirlpool' in their 
washi11g machine deceptively or co11fusingly-High Court found mark/name D 
'Whirlpool' 1011g associated with plaintiffs who acquired trans-border reputa-
tion ill respect of same, that there was no reliable evidence of defendants 
having marketed their washing machines ill that name for a co11siderable 
length of time, that i1Teparable injury would be caused to plaintiff'~-reputation 
and goodwill because washing machines of defendants bearillg that mark were 
11ot of same sta11dard and quality as those of plaintiffs' machines, whereas 
no illjwy would be caused to def endallts by grant of injunction as their 
machines could be sold just with removal or replacement of label 
'Whirlpool'-Accordingly, tempormy injunction was gra11ted by High Court ill 
favour of plailltiffs-H eld : injunction was based on equitable priw-
ciples-Conclusion reached by High Court reasonable a11d based Oil relevant 
material-Hence, Supreme Court's illteiference by reassessment of material 
not called for at the stage of second appeal-Constitution of India, 1950, 
Article 136-Trade and Marchandise Marks Act, 1958, Sections 46 and 56. 
Torts: 
Passing-off action-Ullf air trading activities-Trade mark, being used 
by a company, was registered by another company through false repre-
sentation to obtain economic benefit of reputatioll established by the other 
compally- Held : passing-off action was maintainable in law even against 
E 
F 
G 
registered owner of trade mark. 
H 
369 
A 
B 
370 
SUPREME COURT REPORTS (1996] SUPP. 5 S.C.R. 
The respondent-plaintiffs filed a suit in the High Court seeking 
temporary injunction against the appellants-defendants which was granted 
by the Single Judge and affirmed on appeal by the Division Bench of the 
High Court. The finding of the High Court were : 
(i) Long prior user of the name of 'WHIRLPOOL' by plaintiff No. 
1 and a transborder reputation and goodwill extending to India to the use 
of that name : 
(ii') Prior registration of that name even in India from 1956-57 to 
1977 against the earliest claim by the defendants from 1986 (the date of 
C application for registration) : 
(iii) Grant of registration to the defendants on 12.8.1992, only on 
the ground of proposed user instead of actual user, which was opposed by 
the plaintiffs and is subject to the outcome in the pending appeal : 
D 
(iv) No reliable evidence of the defendants having marketed their 
washing machines for any considerable length for time prior to grant of 
the interlocutory injunctions : 
(v) Irreparable injury to the plaintiffs' reputation and goodwill with 
whom the name of 'WHIRLPOOL' is associated, because of the washing 
E 
machines of the defendants not being of the same standard and quality of 
performance as the plaintilrs machines : 
F 
(vi) On the other hand, no injury to the defendants by grant of the 
injunction inasmuch as the defendants' washing machines can be sold 
under the other names used earlier, with the removal and replacement 
only of the small metallic strip which bears the offensive trade mark/name 
which includes 'WHIRLPOOL'; and 
(vii) There is no justification to accuse the plaintiffs of culpable 
delay, acquiescence and !aches or abandonment so as to disentitle them 
G from the relief of injunction. 
It was also held by the High Court that there was no plausible 
explanation offered by the defendants for recently adopting the mark 
'WHIRLPOOL' when business in washing machines was being carried out 
earlier in other names, which is supportive of the plea of unfair trading 
H activity in an attempt to obtain economic benefit of the reputation estab-
, 
N.R. DONGREv. WHlRLPOOLCORPN. 
371 
lished by the plaintiff No. 1, whose name was associated with the mark A 
'WHIRLPOOL'. The plaintiffs' conduct in opposing the defendants' ap-
plication for registration as soon as it was notified and persisting in the 
opposition by filing an appeal against the Registrar's order and then an 
application for rectification

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