N.R. Dongre v. Whirlpool 1996 PTC (16)
FACTS:
- Whirlpool Corporation is a US-based company that manufactures and sells washing machines under the trademark “WHIRLPOOL”.
- Whirlpool Corporation had been using the trademark “WHIRLPOOL” in the US and other countries since the 1930s.
- Whirlpool Corporation’s washing machines had been sold in India since the 1970s, but
- Whirlpool Corporation had not registered the trademark “WHIRLPOOL” in India until 1990.
- Dongre and Ors. was an Indian company that manufactured and sold washing machines.
- In 1986, Dongre and Ors. had registered the trademark “WHIRLPOOL” in India.
- In 1989, Whirlpool Corporation filed a suit against Dongre and Ors. for passing off. Whirlpool Corporation alleged that Dongre and Ors. were using the trademark. “WHIRLPOOL” to deceive consumers into thinking that their washing machines were manufactured by Whirlpool Corporation.
- The doctrine of transborder reputation recognizes that a trademark can acquire goodwill in a country even if it is not used or registered in that country. This is because consumers in one country may be aware of a trademark from another country through advertising, international trade, or other means.
ISSUE:
- Whether or not the action for passing off is maintainable against the registered proprietor of a trademark by the respondents who are not the registered proprietors of the ‘whirlpool’ trademark concerning washing machines?
- Whether or not the respondent acquired a transborder reputation?
- Whether such transborder reputation transcends territorial boundaries or not?
HELD:
- The Supreme Court of India held in favour of Whirlpool Corporation in the case of N.R. Dongre . v. Whirlpool Corporation , 1996.
- The Court held that Whirlpool Corporation’s trademark “WHIRLPOOL” had acquired a transborder reputation in India, even though it was not registered in India before Dongre and Ors. registered it.
- The Court also held that Dongre and Ors. were passing off their washing machines as Whirlpool washing machines.
- Whirlpool Corporation had been using the trademark “WHIRLPOOL” in the US and other countries for many years, and the trademark was well-known to consumers in India.
- Whirlpool Corporation’s washing machines had been sold in India since the 1970s, and the trademark “WHIRLPOOL” was associated with Whirlpool Corporation’s washing machines in the minds of consumers in India.
- Dongre and Ors registered the trademark “WHIRLPOOL” in India in 1986, but they did not start using the trademark until 1989.
- Dongre and Ors. had used the trademark “WHIRLPOOL” in a way that was likely to deceive consumers into thinking that their washing machines were manufactured by Whirlpool Corporation.
Video Summary https://www.youtube.com/watch?v=GgJRQxPQ5-E&list=PL-1DBVyVi7EaCojbQa5_XKBVJqA1y1REh&index=2&t=2s