N R DONGRE Vs. WHIRLPOOL CORP

JUDGEMENT

(1.) This is an appeal against the order of the learned Single Judge dated October 31, 1994 whereby the application of the respondents (who are plaintiffs in Suit No.1705/94) under Order 39 Rules 1 and 2 Civil Procedure Code seeking an ad interim injunction restraining the appellants(defendants in the abovesaid suit) from passing off their goods as that of the respondents was allowed and the appellants were restrained from manufacturing, selling, advertising or in any way using the trade mark 'WHIRLPOOL' in any other trade mark deceptively or confusingly similar to the trade mark 'WHIRLPOOL' in respect of their goods. The appeal arises in the following circumstances:-

(2.) The first respondent, which is the first plaintiff in the suit, is an American Corporation, organized and existing under the laws of the State of Delaware, USA. The second respondent, a Company registered in India, is a joint venture company established by the first respondent and a company called Sundram Clayton. A suit was filed by the respondents on 4th August, 1994 against the appellants for permanent injunction, passing off and damages.

(3.) According to the plaint the first respondent is engaged in the manufacture, sale, distribution and servicing of washing machines under the trade mark WHIRLPOOL. It has, directly or through vs subsidiaries, more than 2000 trade mark registrations all over the world. In India its trade mark 'WHIRLPOOL' was registered on February 22, 1956 in respect of clothes dryers, washers, dishwashers, vacuum. cleaners, air- conditioners, dehumidifers, freezers etc. in Classes 7,9 and 11. The registralions were renewed uplo the year 1977 hut despite instructions of the firsi respondent for renewal of registration in Class 7 and 9, the registrations lapsed due to lack of proper communication with its counsel. Notwithstanding the lapsed registration, the trade mark of the first respondent was used in this country through sale of its washing machines to the U.S. Emabassy and U.S. AID offices in New Delhi and also through advertisements in various publications having a circulation in India. Besides the products of the first respondent were reaching the Indian consumers in a second hand State or through indirect channels. Plaint also refers to the recent liberal economic policy as a result whereof, in the year 1987, it established a .joint venture known as TVS Whirlpool Ltd.' The respondents thereafter filed 9 applications for registration of trade mark 'WHIRLPOOL' in Classes 7,9 and 11 in respect of their goods including washing machines which arc pending in the Trade Mark Registry