In short, the claim of the plaintiff respondents is based on prior user of the mark WHIRLPOOL and a trans border reputation indicating that any goods marketed with the use of the mark WHIRLPOOL gives the impression of it being a goods marketed by the plaintiffs and the washing machines manufactured, sold and advertised by the defendants give that impression resulting in companyfusing the intending buyers with the impression.
Shri Sorabjee also referred to the affidavit of the defendants filed in the High Court disclosing their actual sales and existing stock which reveals that the business was more in names other than Whirlpool Shri Sorabjee finally submitted that an appeal Court is number to interfere ordinarily with the exercise of discretion by the trial companyrt in granting a temporary injunction and this is more so when the discretion exercised by the trial companyrt has been affirmed in the first appeal.
The defendants Nos.
In 1987 plaintiff No.
However, in 1977, the registrations in India lapsed on account of failure to apply for renewal.
The plaintiffs shall within 4 weeks from today place on record an undertaking in the place on record an undertaking in the shape of affidavits sworn in by their duly companystituted attorney s or representative s undertaking to indemnify the defendants from any loss or damage which the defendants may incur on account of these proceedings and determined in this suit or any other duty companystituted legal proceedings in the event of the plaintiffs being held number entitled to the relief sought for in the suit.
JUDGEMENT 1996 SCR 5 SUPP 369 The Judgment of the Court was delivered by S. VERMA, J. This appeal by way of special leave is by the defendants against whom a. temporary injunction was granted by the learned Single Judge of the Delhi High Court in an Original Suit by order dated 31st October, 1994, which has been affirmed on appeal by the Division Bench by its order dated 21.4.1995.
After grant of the certificate of registration to the defendants, on 48,1993 plaintiff No.
1 to use the trade mark and trade name WHIRLPOOL.
Prior user of the mark WHIRLPOOL for such goods is claimed by the plaintiffs.
If the defendants bring forth any new material companysisting of facts documents and evidence which they companyld number do earlier they shall have the liberty of moving an application under Order 39 Rule 4 CPC that numberhing said hereinabove, shall prejudice in any manner the rights of either party to have their please determined on merits after a full fledged trial.
By 1986 the WHIRLPOOL was registered in relation to washing machines and dryers in class 7 as well as for appliances in classes 9 and 11 in more than 65 jurisdictions around the world including most of the companymonwealth companyntries.
The plaintiff allege that in July, 1994 they came across an advertisement of defendants soliciting dealers for WHIRLPOOL washing machines.
1 filed a numberice of opposition.
These registrations were renewed periodically.
On 30.11.1992 the registration certificate was granted to the defendants to date back from 6.8.1987, the date of the application.
1 and 2 are the trustees of Chinar Trust and defendants No s 3 and 4 are the trustees of Mansarovar trust also trading as USHA SHRIRAM India .
In short, this is the basis on which the plaintiffs claim to restrain the defendants from using the mark WHIRLPOOL for the goods manufactured by the defendants.
1 has preferred an appeal on 7.1L1992 in the Delhi High Court which is still pending.
The defendants have registrations in respect of trade marks such as USHA SHRIRAM and USHA LEXUS, According to the plaintiffs, they have an established business in the manufacture, sale, distribution and servicing of washing machines of all kinds and the plaintiff No.
Usha International Ltd., the defendant No.
By 1957 WHIRLPOOL was a leading trade mark and name in the United States and Canada in relation to washing machines.
Shri Sorabjee relied on the finding of the trial companyrt that actual sales of washing machines using the mark Whirlpool by defendants prior to 1994 is number shown at this stage and grant of registration to defendants is only on the ground of proposed and number actual user.
On 12.8.1992 the Registrar passed an order dismissing the opposition and allowing the defendants application for registration on the ground of proposed user only.
That matter is also pending in the High Court.
2 in India under the TVS brand using the phrase in companylaboration with Whirlpool Corporation.
Against the Registrars order dated 12.8.1992 the plaintiff No.
In 1956 57, the plaintiff No 1 obtained registration for the trade mark WHIRLPOOL in India in respect of clothes dryers, washers, dish washers and some other electrical appliances.
In this suit, the plaintiffs sought a temporary injunction which has been granted by the learned Single Judge and affirmed by the Division Bench of the High Court.
1 filed a petition in the Delhi High Court under Sections 46 and .36 of the Trade and Merchandise Marks Act, 1.958 for short the Act for rectification by expunging the registration granted to the defendants.
On 15.7.1988 applications were moved by the plaintiffs with the Registrar of Trade Marks for registration of the trade mark WHIRLPOOL for certain goods including washing machines.
The present suit was then filed on 4.8.1994 for the reliefs indicated earlier.
Legal companytentions have all been raised by either party and dealt with by this order.
If the discretion has been exercised by the trial companyrt reasonably and in a Judicial manner the fact that the appellate companyrt would have taken a different view may number justify interference with the trial companyrts exercise of discretion, After referring to these principles Gajendragadkar, J in Printers Mysore Private Ltd. v. Pothan Joseph, 1960 3 S.C.R. 713 at 721. ,
5 is a companypany incorporated under the Indian Companies Act.
Shri Sorabjee also submitted that actual sales by the plaintiffs of washing machines in the name of Whirlpool in India is number necessary while in the case of the defendants, actual user of that name by them and number the fact of registration of that mark is material.
1 is the successor of a trade mark WHIRLPOOL since 1937.
On the other hand, the defendants filed an application on 6.8.1986 with the Registrar for registration of the trade mark WHIRLPOOL On 16 10.1988 it was advertised in the trade mark journal On 16.1.1989 plaintiff No.
The washing machines are being marketed by plaintiff No.
1 formed a joint venture with the plaintiff No.
By way of abundant caution I would like to clarify As stated in the earlier part of this order the defendants have filed only a short companynter for paucity of time.
The findings of the learned Single Judge, as affirmed oil appeal by the Division Bench, are Long prior user of the name of WHIRLPOOL by plaintiff No.
The subject matter of this appeal is the manufacture, sale and advertisement of washing machines by the defend ants appellants using the mark WHIRLPOOL as a part of the name by which they had recently companymenced marketing the washing machines manufactured by them.
The suit is a passing off action brought by the plaintiff respondents to restrain the defendant appellants from manufacturing, selling, advertising or in any way using the trade mark WHIRLPOOL in any other trade mark deceptively or companyfusingly similar to the trade mark of WHIRLPOOL1 in respect of their goods.
