Case Summary
| Citation | N R DONGRE VS WHIRLPOOL CORPORATION, , (1996) 5 SCC 714 |
| Keywords | Trademark, pre-existing, use, injunction, reputation |
| Facts | Whirlpool, a company filed a suit against N.R Dongre and others (Defendants) in India at the Delhi High Court. The Appellant-Defendants were using the name “Whirlpool” (mark) for manufacturing and selling washing machines. During the initiation of the suit, Whirlpool Corp. had failed to renew its trademark registration. However, N.R. Dongre & Others, during this period, had obtained the registration of the mark “Whirlpool”. Delhi High Court granted interim injunction against the defendant for using the trademark. Appeal filed in the Supreme Court. |
| Issues | Whether a non registered prior user of a trademark can obtain an injunction against a competing business,i.e., the registered proprietor of the same? Whether whirlpool was a well known trademark has acquired reputation? |
| Contentions | Defendant claimed that the trademark belongs to them as they got registered it and not the plaintiff. |
| Law Points | High Court stated that a product and its trademark may exceed its geographical boundary not only through importation but also through advertisements. The Supreme Court said the petitioner had extensive pre-existing trademark use, and Whirlpool gained recognition and goodwill in India. The Court looked to the evidence of the publications that contained Whirlpool Corp.’s advertisements to support the existence of its use. The defendant, claiming registered ownership, argued for maintaining their trademark status as it was during the passing-off action. However, the Supreme Court disagreed with this and said it would lead to irreparable harm to the “Whirlpool” corporation’s reputation and goodwill, given the long association of “Whirlpool” with their products. |
| Judgement | Supreme Court upheld Delhi High Court’s decision and granted the injunction. |
| Ratio Decidendi & Case Authority |
