ankushproject.docx

Summary of the case

Facts-

The plaintiffs mark was Whirlpool and they had registered the same in India in 1977.

However the mark had not been renewed. The plaintiffs mark had a worldwide reputation

and the defendant was using the mark on washing machines. The plaintiff had sold

machines in a limited number to the US embassy in India. However they had also advertised

in number of international magazines having circulation in India. The plaintiff- Company

proceeded to file a suit for passing off against the defendants. High court granted the

temporary injunction

Issue

Whether there is any cogent ground to interfere in this appeal with the exercise of discretion

by the trial court?

Contention of the Parties

Plaintiff-

Plintiff contended to be Prior user of the mark 'WHIRLPOOL' as they have an established

business in the manufacture, sale, distribution and servicing of washing machines of all

kinds and the plaintiff No. 1 is the successor of a trade mark 'WHIRLPOOL' since 1937. By

1957 'WHIRLPOOL' was a leading trade mark and name in the United States and Canada in

relation to washing machines. 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 commonwealth countries.

The plaintiff alleges 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.

Defendant-

Contended that the plaintiff had abandoned the said trade mark as they failed to

renew when it lapsed in 1977.

The opposition filed by the plaintiff was rejected by the registrar and registered the

said TM in the name of defendant.

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

They further contended that the filing of suit was delayed therefore no interim relief

can be granted.

Ratio Decidendi:

Passing of action is maintainable against the registered user of the Trade mark.

…….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 trademark. He

cannot represent his own goods as the goods of somebody else even if the Trade mark is

registered.

Supreme Court recognized the concept of trans- border reputation. A trade mark which has

trans-border reputation enjoys protection under Indian Law.

Judgment

Plaintiff has acquired the trans- border reputation extending to India therefore the grant of

interim injunction by the High court was Upheld by Supreme court.

MEMORANDUM FOR APPELLANT

__________________________________________________________________________

IN THE HONOURABLE SUPREME COURT OF INDIA

IN THE MATTER OF

N.R. DONGRE AND ORS ..................................................APPELLANT

V.

WHIRLPOOL CORPORATION AND ANR ........................RESPONDENT


N.R. Dongre And Ors

Ankush Shrivasan Semester VI Section C

Roll No. 28


TABLE OF CONTENTS

TABLE OF ABBRIVATION..................................................................................................ii

INDEX OF AUTHORITIES..................................................................................................iii

TABLE OF CASES............................................................................................................iii

BOOKS...............................................................................................................................iii

STATUTES........................................................................................................................iii

STATEMENT OF JURISDICTION........................................................................................1

STATEMENT OF FACTS......................................................................................................2

ISSUES RAISED.....................................................................................................................4

SUMMARY OF ARGUMENTS.............................................................................................5

[A]Temporary Injunction Passed by the High Court is not Maintainable...........................5

[B] Doctrine of passing off is not applicable in the present case.........................................5

WRITTEN PLEADINGS.........................................................................................................6

[A] High court erred in passing the temporary injunction...................................................6

[A.1]Appellate Court Has The Power To Interfere In The Discretion Exercised By The Trial Court.......................................................................................................................6

[A.2] Delay In Filling Of Petition For Interim Injunction...............................................6

[A.3] Woorpool Was Registered As A Defendants Trade Mark By The Registrar..........7

[B] Doctrine of passing off is not applicable in the present case.........................................8

In the present matter appellants never deceived or caused confusion in relation to the trade mark which it was using for the purpose of business and marketing......................8

[B.1] All The Ingredients Of Passing Off Action Is Not Satisfied In The Present Case.. 8

[B.2] No Actual Use Of The Trade Mark By The Petitioner In India..............................9

PRAYER FOR RELIEF.........................................................................................................10

MEMORANDUM FOR APPELLANT Page i

TABLE OF ABBRIVATION

& And

§ Section

¶ Paragraph

A.C. Appeal Cases

A.I.R. All India Reporter

Anr. Another

Bom. Bombay

Cal. Calcutta

Co. Company

Del. Delhi

Ed. Edition

Etc. Etcetera

i.e. That Is

Id. Ibid

Inc. Inclusive

Ltd. Limited

Mad. Madras

N.S.W. New South Wales

No. Number

Ors. Others

S.C. Supreme Court

V. Versus

Vol. Volume

MEMORANDUM FOR APPELLANT Page ii

INDEX OF AUTHORITIES

TABLE OF CASES

1. Wander Ltd. and Anr. v. Antox India P. Ltd,1991 (11) PTC 1 (SC)

2. Mohd. Mehtab Khan & Ors. v. Khushnuma Ibrahim Khan & Ors.,(2013) 9 SCC 221

3. Kunda Madhukar Shetye and Ors. v Shaila Subrao Shetye and Ors, In the In the

High Court of Bombay at Goa, Writ Petition No. 327 of 2012

4. Suriya v. State of Tamil Nadu, 2008 (5) MLJ 547

5. The State of Maharashtra v. Sayeed Mohd. Hanif Abdul Rahim CRIMINAL

APPEAL NO.880 OF 2009

6. Shri Gopal Engineering & Chemical Works v. M/s. POMX Laboratory, AIR 1992

Delhi 302

7. Warner Bros Entertainment Inc. And Another v. Harinder Kohli and Others, 2008

(38) PTC 185 (Del)

8. Reckitt and Colman products Ltd. V. Borden INC and others 1990) RPC 341 (HL)

9. Cadila Healthcare Limited v Cadila Pharmaceuticals, 2001 5 SCC 73

10. Kabushiki Kaisha Toshiba v. Toshiba Appliances Co, 1994 PTC 53

BOOKS

1. VK Ahuja, Law Relation To Intellectual Property Rights, Lexis Nexis 2nd ed 2013

STATUTES

1. The Trade Marks Act, 1999

2. Trade Mark Merchandise Marks Act, 1958.

MEMORANDUM FOR APPELLANT Page iii

MEMORANDUM FOR APPELLANT Page iv

STATEMENT OF JURISDICTION

The appellant has approached to the honorable Supreme Court of India under Article 136 of

Constitution of India

MEMORANDUM FOR APPELLANT Page 1

STATEMENT OF FACTS

1. 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 The

plaintiff No. 2 has been licensed by the plaintiff No. 1 to use the trade mark and

trade name 'WHIRLPOOL'.

2. The original plaintiffs have an established business in the manufacture, sale,

distribution and servicing of washing machines of all kinds and the plaintiff No. 1 is

the successor of a trade mark 'WHIRLPOOL' since 1937. By 1957 'WHIRLPOOL'

was a leading trade mark and name in the United States and Canada in relation to

washing machines.

3. 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.

4. The defendants filed an application on 6.8.1986 with the Registrar for registration of

the trade mark 'WHIRLPOOL' which was opposed by plaintiff. However 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.

5. On 31st October, 1994 the plaintiff filed original suit in the Delhi High Court. 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.

6. The subject matter of this appeal is the manufacture, sale and advertisement of

washing machines by the defendants-appellants using the mark 'WHIRLPOOL'

7. 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 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.

8. Therefore this appeal is filed by the original defendant (appellant) in Supreme Court

of India to challenge the interim injunction given against the appellant by the Delhi

High court


ISSUES RAISED

[A.]Whether or not the High Court has erred in passing temporary injunction

against the appellant?

[B.] Whether doctrine of passing off is applicable in present case or not?


SUMMARY OF ARGUMENTS

[A]Temporary Injunction Passed by the High Court is not Maintainable

It is humbly submitted that in the present matter the temporary injunction cannot be granted

as firstly the petitioner delayed in filing the petition, secondly the said trade is already

registered in the name of the defendant, thirdly passing of action cannot be maintainable as

all the ingredients are not fulfilled by the petitioner and thirdly there is no trans- border

reputation which is established by the petitioner.

[B] Doctrine of passing off is not applicable in the present case.

It is humbly submitted that 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. In the present matter appellants never deceived or caused confusion

in relation to the trade mark which it was using for the purpose of business and marketing.


WRITTEN PLEADINGS

[A] High court erred in passing the temporary injunction

It is humbly submitted that in the present matter the appellant court has the power to

interfere in the discretion exercised by the High Court secondly said mark is already

registered by the registrar and lastly passing off action is not maintainable as all the

ingredients of the passing off action is not fulfilled.

[A.1]Appellate Court Has The Power To Interfere In The Discretion Exercised By The Trial

Court.

1. It humbly submitted that if conclusion of the lower court is against the established

fact or it is arbitrary and against the settled principle of law,1 the appellate court

have every right to interfere. The appellate court cannot be a mere silent spectator2 or

a rubber stamp or having no effective power or a teeth less creature. It has all the

power to do the real justice.

2. It is contended that the appellate court have all the power to interfere and to set aside

the conclusion of lower court

[A.2] Delay In Filling Of Petition For Interim Injunction

3. It is humbly submitted that interim relief cannot be granted if there is delay in filing

of the passing of action for interim injunction.3 It is further submitted that in an

action of passing off, delay in approaching the Court is fatal; an application seeking

interim relief on this ground alone is liable to be rejected.4

4. It is humbly submitted that the original defendant has a registered trade make in their

name in the year 06.08.1996. Thereafter the defendant had started using the trade

mark to build his business. Plaintiff only approached the court in the year 1994 and 1 Wander Ltd. and Anr. v. Antox India P. Ltd., 1991 (11) PTC 1 (SC), Mohd. Mehtab Khan & Ors. v.

Khushnuma Ibrahim Khan & Ors.,(2013) 9 SCC 221; Kunda Madhukar Shetye and Ors. v Shaila Subrao Shetye and Ors., In the In the High Court of Bombay at Goa, Writ Petition No. 327 of 2012

2 Suriya v. State of Tamil Nadu, 2008 (5) MLJ 547; The State of Maharashtra v. Sayeed Mohd. Hanif Abdul Rahim, CRIMINAL APPEAL NO.880 OF 2009

3 Shri Gopal Engineering & Chemical Works v. M/s. POMX Laboratory, AIR 1992 Delhi 302

4 Warner Bros Entertainment Inc. And Another v. Harinder Kohli and Others, 2008 (38) PTC 185 (Del)


further the plaintiff has abandoned the said trade mark in 1977 when they failed to

renew it. Therefore grant of such interim injunction will be drastic at this stage.

[A.3] Woorpool Was Registered As A Defendants Trade Mark By The Registrar

5. It is submitted that the defendant on 6.08.1986 applied for registration of the said

trade mark. Plaintiff opposed the registration but after considering the objection the

registrar granted the certificate to the defendant on 30.11.1992.

6. It is contended that prime facie the registrar is the best judge to decide whether the

applicant is entitled to get the trade mark registered. It if further submitted that after

considering the plaintiff objection the registrar decided in the favor of defendant

which is still not set aside by the appellant court till date. Therefore in such

circumstances defendant cannot be stopped in using the said trade mark before the

registration is cancelled.

7. It is further contended that in the present case the Trade mark of the plaintiff lapsed

in India in the year 1977. Since 1977 to 15.08.1988 (approx 11 year) plaintiff did

nothing to renew the trade mark. Since plaintiff had not used its trade make for such

a long time, it is clear that plaintiff abandoned its trade mark in India. Therefore the

registrar validly registered the TM in the name of defendant.


[B] Doctrine of passing off is not applicable in the present case.

The doctrine of passing off absolutely despises any form of imitation, explicit or

implicit, if calculated to deceive or cause confusion in relation to trade marks, which in

strict business and marketing sense, are considered as repositories of the goodwill and

reputation emanating from trade in goods and services.5

In the present matter appellants never deceived or caused confusion in relation to the

trade mark which it was using for the purpose of business and marketing.

[B.1] All The Ingredients Of Passing Off Action Is Not Satisfied In The Present Case.

1.1. It is humbly submitted that 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.6

2. It is humbly submitted that in Reckitt and Colman products Ltd. V. Borden INC

and others7 the house of lords laid down that in order to bring passing of action,

three things or elements must be there, i.e. (1) that there was a goodwill or reputation

attached to the goods or to the services which the plaintiff supplied, in the mind of

the purchasing public by association with the plaintiff’s identifying get up (2) there

was misrepresentation to the public likely to lead the people to believe the goods

offered by the defendants were the goods of the plaintiff (3) that the plaintiff was

suffering or plaintiff was likely to suffer by erroneous belief on account of the

misrepresentation of the defendants.

3. It is submitted that in present case there was no misrepresentation made on the part

of the defendant as

a. Firstly, The prospective customers or the ultimate consumers of the good of the

plaintiff was US Embassy and US ATO in India on the other hand the defendants

use to sell the products to the general public in India.

b. Secondly, defendants are manufacturing and selling washing machines which

cost less than 1/3rd the price of the plaintiffs' washing machine; and the full

5 Cadila Healthcare Ltd. V. Gujarat Co-operative Milk Marketing Federation Ltd. And others, 2008 (36) PTC 168 (Del.)

6 Cadila Healthcare Limited v. Cadila Pharmaceuticals, 2001 5 SCC 73

7 (1990) RPC 341 (HL)


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.

c. Thirdly, there would be no damage to the good will of the petitioner will be

caused if the said trade mark is used by the defendant as the said trade mark is

already abandoned by the plaintiff.

[B.2] No Actual Use Of The Trade Mark By The Petitioner In India

4. In the case of Kabushiki Kaisha Toshiba v. Toshiba Appliances Co.8 in this case

the court gave more importance to the ‘use of mark’ in relation to goods than trans-

border reputation. It was also held that a mere use of mark in advertising on other

publication media is insufficient as use because if it were not so trafficking in the

trade mark could be legally indulged in for a mark could be registered and then kept

alive merely by advertisement without ever putting any goods in the market.

5. In the present case the plaintiff for 11 years did not use the said trade mark and only

advertised in the magazines which have wide circulation in India. There was no

actual sale of good. Therefore since there was no actual sale of the goods in the

name of whirlpool, there could be no transborder reputation established in present

case.

6. Therefore an overall view of all these factors negatives the existence of a prima facie

case for grant of a temporary injunction in favour of the plaintiff.

8 1994 PTC 53


PRAYER FOR RELIEF

In light of the facts stated, issues raised arguments advanced and authorities cited, it is

submitted that the honorable Supreme Court of India be pleased -

1. To allow the appeal accordingly and to adjudge that the respondent is not entitled

to an interim injunction.

OR

Pass any order to make any direction as the court may deem fit in the light of Justice,

Equity and Good Conscience to meet the interests of justice in the instant case.

All of which is respectfully prayed

PLACE: NEW DELHI COUNSELS FOR APPELLANT

DATE: 07.04.2015 ANKUSH SHRIVASAN


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