AI OCR 
TaxTMI 
TaxTMI 
TaxTMI 
1996 (8) TMI 508
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....aintiff-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 confusing the intending buyers with the impression. 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. 2. In view of the fact that the trial of the suit has yet to conclude and the final decision of the suit is awaited, it is appropriate that the question of temporary injunction is decided only on the basis of undisputed facts and the material which can legitimately be taken into account at the interlocutory stage. For this reason reference is confined by us only to such material which can be of significance at this stage. 3. The Whirlpool Corporation, plaintiff No. 1 is a multi-national incorporated in U.S.A. TVS Whirlpool Ltd., plaintiff No. 2 is a limited company incorporated in India in which the plaintiff No. 1 a majority....
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.....1989 plaintiff No. 1 filed a notice of opposition. 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. On 30.11.1992 the registration certificate was granted to the defendants to date back from 6.8.1987, the date of the application. Against the Registrar's order dated 12.8.1992 the plaintiff No. 1 has preferred an appeal on 7.11.1992 in the Delhi High Court which is still pending. After grant of the certificate of registration to the defendants, on 4.8.1993 plaintiff No. 1 filed a petition in the Delhi High Court under Sections 46 and 56 of the Trade and Marchandise Marks Act, 1958 (for short the 'Act') for rectification by expunging the registration granted to the defendants. That matter is also pending in the High Court. The present suit was then filed on 4.8.1994 for the reliefs indicated earlier. 6. The learned Single Judge, by order dated 31.10.1994, granted a temporary injunction in favour of the plaintiffs as under : For all the foregoing reasons IA 7657/94 is allowed. The defendants, their partners, trustees, agents, representatives and assignees are hereby res....
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.... the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a Judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Lt....
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....d, in so far as India is concerned, the plaintiffs No. 1 does not make out a case of actual sales in the markets in India. The plaintiff No. 1 has made limited sales to US Embassy and US ATO in India. However, the products have been advertised in magazines having international circulation including in India. xxx xxx xxx As already noticed plaintiff No. 1 was a registered proprietor of the trade mark Whirlpool in India until 1977. Without expressing any opinion on the validity or otherwise of the reasons assigned by the plaintiffs for non renewal of the registration thereafter suffice it to say that inspite of non-registration of the trade mark in India, the plaintiff was trading in Whirlpool products in several parts of the world and also sending the same to India though in a limited circle. Whirlpool associated with the plaintiff No. 1 was gaining reputation throughout the would. The reputation was traveling trans-border to India as well 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. Washing machine is a household appliance used by the....
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....dards and do not give the same quality of performance as the plaintiffs' machines do and so the marketing of the washing machines with WHIRLPOOL trade mark is sure to damage irreparably the reputation and goodwill of the plaintiffs. It has rightly been pointed out that the defendants are not going to suffer any injury inasmuch as even if they have manufactured any washing machines, they have only to remove and replace the small metallic strip bearing the offensive trade mark/name which, includes Whirlpool. The plaintiffs do not have any objection to the defendants manufacturing and offering for sale washing machines in the trade mark/name of USHASHRIRAM or LEXUS or any other name at the choice of the defendants so long as the trade mark/name adopted by the defendants is not the same or similar or deceptively similar to that of the plaintiffs. xxx xxx xxx this Court has formed an opinion that the registration of the WHIRLPOOL as trade mark of the defendants was of no consequence in passing off action. This order too would not have any effect on the registration proceedings, sub judice in appeal which shall be decided on its own merits. 10. The Division Bench while dismissing the ....
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....ark 'WHIRLPOOL' in this country. Even though the appellants have no connection with the respondents, they are using the mark 'WHIRLPOOL' for their products. Prima facie it appears to us that buyers are likely to be deceived or confused as to the origin and source of the goods. They will believe that the product is manufactured by the respondents, an impression not founded in truth. The limitation will pass of as genuine. No one can be permitted to trade by deceiving or misleading the purchasers or to unauthorisedly divert to itself the reputation and goodwill of others. Under Section 27(2) an action for passing off against registered user of trade mark is maintainable at the instance of a prior user of the same, similar or identical mark. Since such a remedy is available against the registered user of a trade mark, an interim injunction restraining him to use the mark can also be granted to make the remedy effective. We also do not agree with the submission of learned counsel for the appellants that the respondents are guilty of culpable delay; acquiescence and laches which disentitle the respondents from claiming the relief of Injunction. xxx xxx xxx There is no plausible & con....
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.... for deciding whether a temporary injunction should be granted against the defendants. The other factors on which Shri Sibal relied are : (i) Plaintiffs filed an opposition to the defendants' application for registration before the Registrar which was rejected, even though their appeal is pending; (ii) A separate application date 4.8.1993 for rectification under Sections 46 and 56 of the Act has been filed by the plaintiffs, which too is pending in the High Court; (iii) Plaintiffs had registration of trade mark 'WHIRLPOOL' in India from 1956-57 which was allowed to lapse in 1977; (iv) a fresh application for registration of the trade mark has been made by the plaintiffs only in 1988, which is pending; and (v) Filing of the suit thereafter on 4.8.1994, in this background is delayed. 13. Shri Sibal also submitted that the defendants are manufacturing and selling washing machines which cost less than 1/3rd the price of the plaintiffs' washing machine; and the full description given on the plate affixed to the defendants' washing machine leaves no room for any confusion in the mind of the buyer that the defendants' machine is goods associated with plaintiffs. Shri Sibal submitted....
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.... to the outcome in the pending appeal; (iv) No reliable evidence of the defendants having marketed their washing machines for any considerable length of time prior to grant of the interlocutory injunction; (v) Irreparable injury to the plaintiffs' reputation and goodwill with whom the name of 'WHIRLPOOL' is associated, because of the washing machines of the defendants not being of the same standard and quality of performance as the plaintiffs' machines; (vi) On the other hand, no injury to the defendants by grant of the injunction inasmuch as the defendants' washing machines can be sold under the other names used earlier, with the removal and replacement only of the small metallic strip which bears the offensive trade mark/name which includes 'WHIRLPOOL'; and (vii) There is no justification to accuse the plaintiffs of culpable delay, acquiescence and laches or abandonment so as to disentitle them from the relief of injunction. It has also been held that there is no plausible explanation offered by the defendants for recently adopting the mark 'WHIRLPOOL' when business in washing machines was being carried out earlier in other names, which at this stage, is supportive of the pl....
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....that use of the 'WHIRLPOOL' mark by the defendants indicates prima facie an intention to pass-off defendants' washing machines as those of plaintiffs' or atleast the likelihood of the buyers being confused or misled into that belief. The fact that the cost of defendants' washing machine is 1/3rd of the cost of the plaintiffs' washing machine as stated by Shri Sibal, itself supports the plaintiffs' plea that the defendants' washing machines are not of the same engineering standard and are inferior in quality to the washing machines of the plaintiffs'. In addition, it has been rightly held that the grant of interlocutory injunction would cause no significant injury to the defendants who can sell their washing machines merely by removing the small metallic strip bearing the offensive trade mark/name which includes 'WHIRLPOOL'. On the other hand, refusal of the interlocutory injunction would cause irreparable injury to the plaintiffs' reputation and goodwill since the trade mark/name 'WHIRLPOOL' is associated for long because of prior user and even otherwise with the plaintiff No. 1 - Whirlpool Corporation. These factors which have been relied on for grant of the interlocutory injuncti....