NR Dongre v Whirlpool Corporation (1996) 5 SCC 714 Pranav Kaushal LANDMARK JUDGMENT Mon, May 27, 2019, at ,12:25 PM This is a landmark case concerning the trans-border reputation and goodwill of a company. The Indian courts have recognized the concept of trans-border reputation in IP cases. A prior adopter of a trademark in any part of the world can successfully enforce its rights in India, provided that there is spillover reputation which can be substantiated through documentary evidence. Whirlpool Corporation is an American multinational manufacturer and marketer of home appliances. The company as of 1957 had 2000 trademark registrations all over the world across 65 countries through itself and through its subsidiaries. It obtained the registration of the trademark ‘Whirlpool’ in India in 1956 for cloth dryers, dishwashers, washing machines among other appliances. However, in the year 1977, the trademark registration of the corporation lapsed as a result of failure to renew the registration. FACTS OF THE CASE The Whirlpool Corporation, i.e. the Plaintiff No. 1 is a multinational corporation incorporated in the U.S.A. and had an established business in the manufacture, sale, distribution, and servicing of washing machines of all kinds. Plaintiff No. 1 is the successor of a trademark ‘WHIRLPOOL’ since 1937. By 1957 ‘WHIRLPOOL’ was a leading trademark and name in the United States and Canada in relation to washing machines. Plaintiff No. 1 had through itself or through its subsidiaries 2000 trademark registration all over the world spanning 65 countries. Plaintiff No. 1 had obtained registration of the Trade Mark ‘WHIRLPOOL’ in India in the year 1956 in respect of clothes dryers, washers, dishwashers, etc. In Classes 7, 9 and 11 However in 1977, registrations in India lapsed on account of failure to apply for renewal. In 1987, Plaintiff No. 1 entered into a joint venture with the Plaintiff No. 2, i.e. TVS Whirlpool Ltd. (a limited Company incorporated in India) and the machines were sold by Plaintiffs under the TVS brand using the phrase ‘in collaboration with Whirlpool Corporation’. Plaintiff No. 2 was licensed by the Plaintiff No. 1 to use the trademark and trade name ‘WHIRLPOOL’. Before this, the products bearing the marks ‘WHIRLPOOL’ were being sold by Plaintiff No. 1 to US Embassy in India. Sometimes, in August 1986 the Defendants filed applications for registration of the Trade Mark ‘WHIRLPOOL’. When the said application was published, the Plaintiffs opposed the registration of the same. However, the opposition of the Plaintiff was dismissed by the Assistant Registrar on grounds of non-use and non-reputation of Plaintiffs’ mark ‘WHIRLPOOL’ in India and thus, no likelihood of confusion arises if the Defendants were permitted to use the same. The Plaintiffs filed an appeal against the said order which was pending before the Hon’ble Court. After the Trade Mark of the Defendant was registered, the Plaintiffs filed a petition under Section 46 and 56 of the Trade Marks Act, 1958 seeking cancellation of registration. In July 1994 plaintiffs came across an advertisement of defendants soliciting dealers for ‘WHIRLPOOL’ washing machines. Thereafter, Plaintiffs purchased a washing machine of the Defendant bearing the mark ‘WHIRLPOOL’ which was found to be of inferior quality to the Plaintiff’s washing machine. Thereafter, the Plaintiffs instituted a suit against the Defendants bearing CS(OS) No. 1705 of 1994 in the Hon’ble High Court seeking a permanent injunction on the Defendants from using the mark ‘WHIRLPOOL’. Thereafter, in 1987 the corporation entered into a joint venture with TVS Ltd, a limited company incorporated in India, under the name of ‘TVS Whirlpool Ltd’. All machines and appliances were sold under the TVS brand using the phrase ‘in collaboration with Whirlpool Corporation’. Thus, TVS Ltd. was licensed by the Whirlpool Corporation to use the trademark in the name ‘Whirlpool’ in carrying out all the business transactions in India. Prior to this joint venture, the corporation used to sell products only to the U.S embassy in India bearing the name ‘Whirlpool’. It so happened that in 1986 that Mr. N.R Dongre and his company filed for an application for registration of trademark ‘Whirlpool’. Thereafter, when the registration application was published, Whirlpool Corporation and TVS Ltd, under the banner of TVS Whirlpool Ltd opposed the granting of registration of the trademark. However, the Assistant Registrar of Trademarks dismissed the claims of TVS Whirlpool Ltd on the following grounds: Non-use and non-reputation of trademark ‘Whirlpool’ in India. There would not be any likelihood of any confusion arising if Mr. N.R Dongre and his company are allowed to sell out products bearing the name’ Whirlpool’. The TVS Whirlpool Ltd filed for an appeal against the order of the Assistant Registrar before the Delhi High Court. They filed for a petition under Section 46 and 56 of the Trade Marks Act, 1958 seeking for cancellation of registration of the trademark for N .R Dongre and his company. And in July 1994 the TVS Whirlpool Ltd came across an advertisement of the latter inviting dealers for ‘Whirlpool’ washing machines. They bought a washing machine bearing the name with the mark ‘Whirlpool’ and found it be too inferior in quality in comparison to their own washing machine. The Apex Court held that: “It cannot be denied that insofar as WHIRLPOOL is concerned, the plaintiff has been the first in point of time to be in the market, the question of exact geographical reasons apart…Whirlpool has been frequently advertised and has featured in international magazines circulated in India. Through the pleadings, documents, and affidavits filed by the plaintiffs positively make out a case of actual sales by the plaintiffs of Whirlpool products including washing machines in a number of geographical regions around the world, insofar as India is concerned, Plaintiff does not make out a case of actual sales in the markets in India. The plaintiff has made limited sales to the US Embassy and US AID in India. However, the products have been advertised in magazines having international circulation including in India…Whirlpool associated with plaintiff was gaining reputation through the world. The reputation was traveling trans-border to India as well as through commercial publicity made in magazines which are available in or brought in India. These magazines do have a circulation in the higher and upper-middle-income strata of Indian society. A washing machine is a household appliance used by the middle and upper class of the society.” Whirlpool was a ground-breaking decision in IP jurisprudence, insofar as the Apex Court confirmed that advertising a trademark is considered to use and is sufficient to prove reputation and goodwill in India, even when no goods are being sold on the market. Following Whirlpool, parties with only trans-border reputation and no actual sales of goods in India have succeeded in passing-off cases on several occasions. The Apex Court clearly recognized the principle that a trader should enjoy protection through its prior use of a trademark/trade name, as the benefit of that name, fame, reputation, image, and goodwill should not be taken advantage of by another trader passing off its goods as those of the prior user. Thus, in this manner, the concept of ’Trans-Border Reputation' was recognized by the Supreme Court. And the trademark 'Whirlpool' was deemed to have acquired trans-border reputation which enjoys due protection of the law in India as well, irrespective of its market base or a registration in India.