K.T. Thomas JUDGMENT
Saiyed Saghir Ahmad, J.
1. Leave granted.
2. WHIRLPOOL, true to their name have created a WHIRLPOOL of litigation in this country. Based, as they are, the United States of America, they started the gyrating movement by applying for registration of their Trade Mark "WHIRLPOOL" to the Registrar of the Trade Marks under the Trade Marks Act, 1940, which has since been replaced by the Trade and Merchandise Marks Act, 19S8 and which for the sake of brevity, shall hereinafter be referred to as the "Act". The Trade Mark was duly registered and a Certificate of Registration was issued on 31st of July, 1957 which was renewed twice, in 1962 for a period of seven years and again for seven years with effect from 22.2.70. Since further renewal was not obtained after 1977, it was removed from the Register but the appellants continued to publicise their Trade Mark "WHIRLPOOL" as also the company name through publications Which had wide circulation in this country and thus managed to maintain their reputation among the business circle including prospective customers and buyers.
3. On 6th of Aug. 1986, Mrs. Sumitra Charat Ram and Mr. N.R. Dongre, as Trustees of Chinar Trust applied for registration of the Trade Mark "Whirlpool" in class 7 under Application No. 458134, which was duly advertised by the Registrar in Trade Marks Journal No. 945 on Page 845 pursuant to which the appellant filed their Opposition on 6.01.1989, but their objections were dismissed by the Assistant Registrar by his order dated 12.8.1992. An appeal against this order which was filed in the Delhi High Court on 7.11.1992 has since been admitted on 01.02.1993 and registered as CM. (Main) No. 414 of 1992.
4. In the meantime, "Whirlpool" was registered as the Trade Mark of the Chinar Trust on 30.11.1992 and a Certificate of Registration No. 458134 was granted to them. A petition for Rectification and for removal of this entry from the Register has already been filed by the appellant before the Registrar on 04.08.1993 Under Sections 45 & 46 of the Act. It is still pending.
5. Since Chinar Trust had also started using the Trade Mark "Whirlpool" in relation to certain washing-machines, allegedly manufactured by them, the appellant, as owner of the Trade Mark "Whirlpool", filed a Suit (Suit No. 1705 of 1994) for passing off in the Delhi High Court with an application for temporary injunction under Order 39 Rules 1 & 2 of the CPC for restraining the defendants, namely, Chinar Trust, etc., from using the