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71. Transborder Reputation

(i) In the case of N.R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 585, the appellants got registered the mark "Whirlpool" in respect of washing machines. The Whirlpool Corporation filed a suit for passing off action brought by the respondents to restrain the appellants from manufacturing, selling, advertising or in any way using the trade mark "Whirlpool" of their product. It was held that the passing off an action was maintainable in law even against the registered owner of the trademark. It was held that the name of "Whirlpool" was associated for long with the Whirlpool Corporation and that its trans-border reputation extended to India. It was held that the mark "Whirlpool" gave an indication of the origin of the goods as emanating from or relating to the Whirlpool Corporation. It was held that an injunction was a relief in equity and was based on equitable principles. It was held that the equity required that an injunction be granted in favour of the Whirlpool Corporation. It was held that the refusal of an injunction could cause irreparable injury to the reputation of the Whirlpool Corporation, whereas grant of an injunction would cause no significant injury to the appellants who could sell their washing machines merely by removing a small label bearing the name "Whirlpool".

77. Though, there is Section 102 of the Act relating to abandonment, it is confined to abandonment of an application for registration of Trade Mark and it is not applicable to the present situation. Consequently, one has to revert back to common law rules.

However, here, in view of the peculiar circumstances and non-user of the trade mark in India by the respondents and plaintiffs Nos. 1 and 2 themselves, the question of abandonment is also required to be seen.

Question of abandonment depends on determining the intention to be inferred from the facts of each case. While a mere non-user for a few years may not amount to abandonment of a trademark if referable to accountable facts, a long unexplained non user may suggest an intention to abandon the mark. (See Whirlpool Company & Anr. v. N.R. Dongre & Ors., 1995 (32) DRJ 318).