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=PL1DBVyVi7EaCojbQa5_XKBVJqA1y1REh&index=2&t=2s