Introduction

The case is related to the re-use of a trademark which is already attached to the goodwill and reputation of an entity.

Facts

• The Plaintiffs originally registered the "WHIRLPOOL" trademark for their electrical appliances, including washing machines, found that the Defendants later began using the same trademark for their washing machines.
• Furthermore, the Defendants managed to register this mark in their own name.
• In response, the Plaintiffs filed an original lawsuit against the Defendants, alleging a passing-off action.
• The Single Judge of the Delhi High Court issued an interim injunction, preventing the Defendants from using the trademark until the final resolution of the case.
  • This decision was upheld by the Division Bench.
• The defendant then filed an appeal before the Supreme Court for interim injunction.

Issues Involved

• Whether a non-registered prior user of a trademark can obtain an injunction against a competing business that is the registered proprietor of the same or similar trademark in India?
• Whether Whirlpool was a well-known mark and had acquired a trans-border reputation?

Observation

• The Delhi HC's Single Judge and Division Bench both favored Whirlpool Corporation.
• The Whirlpool Corporation secured a temporary injunction due to presented documents affirming prior use.
• The Division Bench upheld this decision, emphasizing the petitioner's extensive pre-existing trademark use.
• Evidence of widespread advertisements in publications supported the conclusion that 'Whirlpool' attained recognition and goodwill in India.
• The Division Bench asserted that a trademark could extend beyond geographical boundaries through both importation and advertising.
• At the SC, the defendants, claiming registered ownership, argued for maintaining their trademark status as it is, during the passing-off action.
• However, the Supreme Court disagreed, noting irreparable harm to Whirlpool Corporations reputation and goodwill, given the long association of 'Whirlpool' with their products.

Conclusion

• Finding no compelling reasons to overturn the Delhi HC's decision, the SC ruled in favor of Whirlpool Corporation.