TMI Blog1996 (8) TMI 508X X X X Extracts X X X X X X X X Extracts X X X X ..... cannot be seriously disputed that on the findings recorded by the trial court and affirmed on appeal by the Division Bench which appear to us as reasonable conclusion on the relevant material, grant of an interlocutory injunction is the appropriate order to make and the proper exercise of discretion by the trial court. This appeal must, therefore, fail. - C.A. 10703 OF 1996 - - - Dated:- 30-8-1996 - J. Verma and K. Venkataswami, JJ. JUDGMENT 1. 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. 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 confusingly similar to the trade mark of 'WHIRLPOOL' in respect of their goods. The subject matter of this appeal is the manufacture, sale and advertisement of washing machines by the defendants-appellants us ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... including most of the commonwealth countries. 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. These registrations were renewed periodically. However, in 1977, the registrations in India lapsed on account of failure to apply for renewal. In 1987 plaintiff No. 1 formed a joint venture with the plaintiff No. 2. 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 washing machines are being marketed by plaintiff No. 2 in India under the TVS brand using the phrase 'in collaboration with Whirlpool Corporation'. Prior user of the mark 'WHIRLPOOL' for such goods is claimed by the plaintiffs. The plaintiff allege that in July, 1994 they came across an advertisement of defendants soliciting dealers for 'WHIRLPOOL' washing machines. 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. 5. On the other hand, the defenda ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng of facts documents and evidence which they could not do earlier they shall have the liberty of moving an application under Order 39 Rule 4 CPC. (ii) that nothing said hereinabove, shall prejudice in any manner the rights of either party to have their please determined on merits after a full-fledged trial. October 31, 1994 R.C. LAHOTI, J. On Appeal, the Division Bench of the High Court came to the conclusion that there was no reason to interfere with the discretion exercised by the learned Single Judge in granting the temporary injunction. Accordingly, the defendants' appeal was dismissed. 7. The question now is : whether there is any cogent ground to interfere in this appeal with the exercise of discretion by the trial court? 8. We must indicate at this stage that interference in this appeal would be called for only if we reach the conclusion that the exercise of discretion in favour of the plaintiffs is contrary to the settled principles for the grant of a temporary injunction or that it is arbitrary or perverse. In Wander Ltd. and Anr. v. Antox India P. Ltd. [1990] Supp. S.C.C. 727, the factors to be considered for grant of an interlocutory injunction in a passing of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lar trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by the trader to his prospective customers calculated to injure, as a reasonably foreseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader.... (Emphasis supplied) 9. We may now indicate some of the findings recorded by the learned Single Judge which have not been disturbed by the Division Bench. The learned Singh Judge, on appreciation of the material relevant at this stage, reached the following conclusions, namely, : It cannot be denied that in so far as "Whirlpool" is concerned, plaintiff No. 1 has been the first in point of time to be in the market, the question of exact geographical reasons apart. The defendants' earliest claim to user commences in July/August, 1986, the date of their application for registration, though this claim is seriously disputed by the plaintiffs. XXX XXX XXX Whirlpool has been frequently advertised and has featured in international magazines having circulation in India. xxx xxx xxx Though the pleadings, documents and affidav ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... iff No. 1. The matter has been contested throughout till the date of decision by the Assistant Registrar of Trade Mark. Having lost there at the plaintiffs have preferred an appeal which is pending. There is no question of acquiescence by the plaintiffs. xxx xxx xxx For the present the defendants have not adduced any documentary evidence of their having marketed their washing machines enabling a finding on the length of time and the extent to which they have marketed if at all their such products. The Asstt. Registrar of the trade mark has also not recorded any finding in favour of the defendants as to the actual user by them of the trade mark Whirlpool. The findings of the Assistant Registrar quoted hereinabove show his having formed an opinion that the proposed use in future could entitle the defendants for registration. Having lost before the Assistant Registrar the plaintiffs have preferred an appeal and also filed this suit. The plaintiffs cannot justifiably be accused of culpable delay, acquiescence and laches or abandonment so as to disentitle them from the relief of injunction. xxx xxx xxx The learned counsel for the plaintiffs have rightly contended that in the absence ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mselves claim the adoption thereof from 1886. Thus, we see no reason to differ with the finding of the learned Single Judge that the first respondent acquired transporter reputation in respect of the trade mark 'WHIRLPOOL' and has a right to protect the invasion thereof. xxx xxx xxx The concept and principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. A trader needs protection of his right of prior user of a trade mark as the benefit of the name and reputation earned by him cannot be taken advantage of by another trader by copying the mark and getting it registered before he could get the same registered in his favour. We see no reason why a registered owner of a trade mark should be allowed to deceive purchasers into the belief that they are getting the goods of another while they would be buying the goods of the former which they never intended to do. In an action for passing off if should not matter whether misrepresentation or deception has proceeded from a registered or an unregistered user of a trade mark. He cannot represent his own goods as the goods of some body else. xx ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... we see no reason to interfere with the discretionary order passed by the learned Single Judge dated October 31, 1994 granting the restraint order.... 11. An attempt was made at the hearing before us by the appellants to place reliance on some additional material produced at this stage. It is sufficient to observe that this appeal has to be decided on the basis of material produced in the trial court. We may add that the trial court itself has referred to Order 39, Rule 4 CPC granting liberty to move an application thereunder, if there be any significant additional material available to invoke the jurisdiction of the trial court for the discharge or variation of the order of temporary injunction. We may add that the additional material produced at this stage is also not sufficient to swing the balance in the other direction. 12. Shri Kapil Sibal, learned counsel for the appellants conceded fairly at the outset that a passing off action is maintainable in law even against a registered owner of the trade mark and, therefore, the fact that the defendants have obtained a registration (subject to the outcome of a pending appeal) is by itself not sufficient to render the suit not mai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... them and not the fact of registration of that mark is material. Shri Sorabjee relied on the finding of the trial court that actual sales of washing machines using the mark 'Whirlpool' by defendants prior to 1994 is not shown at this stage; and grant of registration to defendants is only on the ground of proposed and not actual user. 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 not to interfere ordinarily with the exercise of discretion by the trial court in granting a temporary injunction and this is more so when the discretion exercised by the trial court has been affirmed in the first appeal. 15. The findings of the learned Single Judge, as affirmed on appeal by the Division Bench, are : (i) Long prior user of the name of 'WHIRLPOOL' by plaintiff No. 1 and a transporter reputation and goodwill extending to India to the use of that name; (ii) Prior registration of that name even in India from 1956-57 to 1977 against the earliest claim by the defendants from ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dependent conclusion thereon for the first time and it has only to be seen whether the conclusion reached by the trial court was reasonably possible on the material. Moreover, even on a reassessment, it appears to us that the conclusion reached by the trial court in favour of the plaintiffs is the one more probable and reasonable on this material. 17. The question now is : whether the exercise of discretion by the trial court is favour of the plaintiffs to grant the interlocutory injunction is in accordance with the settled principles of law regulating grant of interlocutory injunctions or not? We think it is so. 18. Injunction is a relief in equity and is based on equitable principles. On the above concurrent findings, the weight of equity at this stage is in favour of the plaintiffs and against the defendants. It has also to be borne in mind that a mark in the form of a word which is not a derivative of the product, points to the source of the product. The mark/name 'WHIRLPOOL' is associated for long, much prior to the defendants' application in 1986 with the Whirlpool Corporation - plaintiff No. 1. In view of the prior user of the mark by plaintiff No. 1 and its trans-border ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... assing-off action based on the right in common law distinct from the statutory right based on a registered mark, an injunction cannot be granted even against an owner of the trade mark in an appropriate case. It is for this reason, Shri Kapil Sibal fairly conceded this position at the outset and relied on the fact of registration in favour of the defendants only for the limited purpose indicated earlier. The surviving controversy at this stage was confined only to the legality and propriety of an interlocutory injunction granted on the facts of this case. 21. It cannot be seriously disputed that on the findings recorded by the trial court and affirmed on appeal by the Division Bench which appear to us as reasonable conclusion on the relevant material, grant of an interlocutory injunction is the appropriate order to make and the proper exercise of discretion by the trial court. The decision of this court in Wander Ltd. and Anr. v. Antox India P. Ltd. (supra) is alone sufficient to support this view. We may add that the trial court has taken care to protect the defendants' interest at the interlocutory stage during the trial of the suit in the language used for grant of the interlo ..... X X X X Extracts X X X X X X X X Extracts X X X X
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