1995 Supreme(Del) 343

High Court Of Delhi
N.R.DONGRE - Appellant
Versus
WHIRLPOOL CORPORATION - Respondent
First Appeal (OS) 262 of 1994
Decided On : 04/21/1995

Headnote:Civil Procedure Code 1908 - Order 39 Rules 1 & 2 — lnterim injunction restraining the passing off, the trade mark — Trade Mark WHIRLPOOL having trans border reputation — No Explanationn as to how the trade mark adopted by defendant — Injunction granted.

       Trade Mark - Reputation of — It travels trans border on account of development of communication system including satellite. Television contributing to information explosion.

       HELD:

       The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge & awareness of the same reaches even the shores, of those countries where the goods have not been marketed. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinema etc. even though there may not be availability of the product in those countries because of import restrictions or other factors. In todays world it cannot be said that a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation & appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit & disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of the information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market.

       Thus a product and its trade name transcends the physical boundries of a geographical region and acquires a trans border or overseas or extraterritorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trader & its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial.

       Passing off — Attempt to appropriate the mark of another person even though a foreign trader is not permissible.

       Trade & Merchandise Marks Act - Section 28 r/w 30 — Registration of a trade mark is irrelevant in an action for passing off as it does not confer any right greater that what is acquired by prior use of trade mark.

       HELD:

       Registration of a trade mark does not provide a defense to the proceedings for passing off as under Section 27(2) of the Act a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof. Again this right is not affected by Section 31 of the Act, under which the only presumption that follows from registration of a mark is its prima facie evidentiary value about its validity and nothing more. This presumption is not an unrebuttable one & can be displaced.

       A reading of Section 28(3) with Section 30(1)(d) shows that the proprietor of a registered trade mark cannot file an infringement action against a proprietor of an identical or a similar trade mark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trade marks and bar action of infringement against each other, Section 27(2) on the other hand deals with the passing off action. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). thereforee, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of goodwill & reputation in a trade mark was recognised at common taw even before it away subject of statutory law. Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognised by Sections 27(2) and 33.