N.R. Dongre and Ors. v. Whirlpool Co. and Anr.

Transborder Reputation Can Protect an Unregistered Trademark

A well-known foreign brand can claim rights in India even before local use or registration

Parties Involved :

⦁ Petitioner: N.R. Dongre & Others – Indian parties attempting to use the trademark “Whirlpool” in India for washing machines.

⦁ Respondent: Whirlpool Corporation – A U.S.-based company, known worldwide for manufacturing washing machines and other home appliances.

Background & Facts :

Whirlpool Corporation had once registered the “Whirlpool” trademark in India but had allowed the registration to lapse. Later, N.R. Dongre and others attempted to register and use the "Whirlpool" mark for washing machines in India, claiming it was not registered and thus open for use.

Whirlpool, although not presently using the trademark in India, opposed the use by Dongre, asserting that it enjoyed transborder reputation – i.e., its products and advertisements had a global reach, and Indian consumers already associated “Whirlpool” with the American company.

Whirlpool filed a suit seeking injunction against Dongre's use of the mark.

Core Legal Issue :

Can a company that has no current trademark registration or active use in India still claim protection for its mark based on international reputation (transborder reputation)?

Court’s Observations :

The Supreme Court held:

⦁ Whirlpool’s brand had global goodwill and reputation, including in India, through advertising in international magazines, media exposure, and brand recognition.

⦁ The Indian public had knowledge of the Whirlpool brand, and even without local sales, it had acquired distinctiveness and secondary meaning.

⦁ Passing off action can be maintained in India even without registration, if the brand has transborder reputation.

The court found that Dongre's adoption of the mark was an attempt to trade upon Whirlpool’s goodwill, which amounted to passing off.

Final Decision :

⦁ The Supreme Court granted an injunction against N.R. Dongre and others, restraining them from using the “Whirlpool” mark.

⦁ It held that a well-known foreign mark enjoys protection under Indian law even without registration, provided its reputation has reached Indian consumers.

Legal Principle Established :

⦁ Transborder reputation is a valid ground for protecting trademarks in India.

⦁ Registration is not mandatory for bringing a passing off action under Indian law.

⦁ A foreign brand with international fame can protect its mark in India if it can show that Indian consumers recognize and associate the mark with it.