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N.R DONGRE v. WHIRLPOOL CORPORATION

1996 PTC (16) 583 (SC)

By: Alan John Abraham, 3rd year Law Student, B.A. LL.B.

FACTS

The plaintiff Whirlpool is an American corporation engaged in the selling of home appliances like washing machines, The plaintiffs sold washing machines and similar appliances. Whirlpool has an established business in the manufacture, sale, distribution and servicing of washing machines of all kinds and Whirlpool inc 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.  During 1956-57 the plaintiff applied for registration of the trademark “WHIRPOOL” in India. These reapplied for registrations regularly.

However in 1977 the trademark “WHIRLPOOL” lapsed due to failure to apply for renewal. The defendants N.R Dongre filed an application on 6.8.1986 with the Registrar for registration of the trade mark ‘WHIRLPOOL’; the plaintiff filed a notice of opposition. The registrar ignored the plaintiffs and granted the registration of the trademark.

The plaintiffs filed an appeal before a single judge  bench at Delhi high court who granted a temporary injunction, and later this decision was appealed before a division judge bench which didn’t overturn the decision.

ISSUES

  1. Does the plaintiff have a right to ask for a temporary injunction against the defendant for using the trademark “WHIRLPOOL” which belonged to them formerly ?
  2. Does the trademark Whirlpool have a trans-border reputation?
  3. Whether the defendant has a right to sell their products under the name “WHIRPOOL”.

REASONING OF THE COURT

The plaintiff has a right to ask for a temporary injunction, since injunction is a relief in equity and comes under equitable principles. The principles of equity favours the plaintiff and not the defendant. The court’s reasoning was that the Trade  mark points to the source of the product unless it is a derivative of the product. Here the defendants tried to pass off their products as Whirlpool which was an international brand headquartered in America and the plaintiffs have been using this trademark long before the defendants started using the trademark. The defendant’s products were cheaper and of inferior quality and engineering.

The defendants started using the trademark in 1986, and the plaintiffs have been using the trademark since the 1930’s. The defendants using unfair trade practices were trying to pass off their products as “ WHIRLPOOL” which was potentially misleading and could confuse the buyer into thinking they were buying American refrigerators. So, the court decided that the plaintiff had a right to request an Injunction.

The court also used the concept of trans-border reputation, which essentially meant that the plaintiff has been using for a long time, and since the trademark “WHIRLPOOL” gives the buyer the idea that the product came from the American brand “WHIRPOOL” or a relation to the brand. The court decided that the defendant does not have a right to sell their products under the name “ WHIRLPOOL”.

JUDGEMENT

The court decided in favour of the plaintiff “ Whirlpool Corporation” who has been using the trademark “WHIRLPOOL” for a long time. The court accused the defendants of engaging in unfair practices and passing off their products under name “WHIRPOOL” to trick and guile the buyers into buying their cheap products of shoddy quality. The division bench affirmed the decisions of the single judge bench of Delhi High Court and they refused to interfere with the decision. The court disagreed with the defendants in that the plaintiffs made a delay in filing the appeal and decided that the principle of laches does not apply here. The court also used the concept of Trans border reputation and prior registration of the trademark “WHIRPOOL” by the whirlpool corporation to decide in favour of the plaintiffs.

For the first time, the Supreme Court of India recognized the customary right of a multinational corporation to use its well-known trademark and to obtain a court order. Therefore, the concept of cross-border reputation was formulated in this case. A trademark owner does not have to seek customary legal remedies against counterfeiting. It was stressed that the owner of a notorious trademark has the right to seek a court order in cases of embezzlement.

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