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"Meanwhile, it would be comforting for the international community to know that reputation of trade marks of overseas companies is begin recognised in India and there have been significant judicial precedents on the question of transborder or spill-over of international reputation, notwithstanding the fact that India is not a signatory to the Paris Convention and the patents law has not so far been amended in India after signing of GATT.

In November 1993 the Delhi High Court restrained two local companies by separate orders of interim injunction from using BENZ and MERCEDES respectively.

The principles enunciated in the above decisions were followed in another judgment by the Delhi High Court in October 1994 in the Whirlpool case. This was a passing off action instituted by Whirlpool Corpn. against an Indian company, seeking grant of an ad interim injunction preventing the defendant from passing off its goods as those of the plaintiffs by use of trade mark "WHIRLPOOL". One of the question before the Court was whether the plaintiff-who was not selling in India - could claim the benefit of transborder reputation in trade mark "WHIRLPOOL" so as to maintain a passing off action in India or should its goodwill and reputation be confined to territories in which it has proved actual use of the trade mark in the market. The documents filed in the proceedings proved that some limited sales had been made to US Embassy and USAID in India and that the "WHIRLPOOL" products had been advertised in magazines having international circulation including in India. The court held that the plaintiff could bank upon transborder reputation of its washing machines for the purpose of maintaining passing off action in India. The Supreme Court upheld that decision.

".... The court frowns upon any attempt by one traders to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country."

9. In N.R. Dongre versus Whirlpool Corporation - 1996 PTC (16) 583 (SC) the Supreme Court held:-

"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 favor 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 transborder reputation extending to India, the trade mark of 'WHIRLPOOL' gives an indication of the origin of the goods as emanting from or relating to the Whirlpool Corporation plaintiff no.1. The High court has recorded its satisfaction that use of the 'WHIRLPOOL' mark by the defendants indicates prima facie an intention to passoff defendants' washing machines as those of the plaintiffs' or at least the likelihood of the buyers being confused or misled into that belief. The fact that the cost of defendants' washing machine is 1/3rd of the cost of defendants' plaintiffs' washing machine as stated by Sh.Sibal, itself supports the plaintiffs' plea that the defendants' washing machines are not of the same engineering standard and are inferior in quality to the washing machines of the plaintiffs'. In addition, it has been rightly held that the grant of interlocutory injunction would cause no significant injury to the defendants who can sell their washing machines merely by removing the small metallic strip bearing the offensive trade mark/name which includes 'WHIRLPOOL'. On the other hand, refusal of the interlocutory injunction would cause irreparable injury to the plaintiffs' reputation and goodwill since the trade mark/name 'WHIRLPOOL'. is associated for with the plaintiff no.1 Whirlpool Corporation. These factors which have been relief on for grant of the interlocutory injunction by the trial court indicate that the exercise of discretion was in accordance with the settled principles of law relating to the grant of interlocutory injunctions in a passing off action. The affirmance of the trial court's order by the Division Bench on an appeal reinforces the trial court's view."

Para-21. "The cause of action first arose at New Delhi in favor of the plaintiffs in the last week of July, 1999, when they first learnt about the impugned use by the defendants of the trade mark FLEXGRIP in India."

2. Another submission advanced by the learned counsel was that the case of trans-border reputation as attempted to be portrayed by the plaintiff was misconceived. Her submission was that no evidence has been filed at the prima facie stays to show any transborder reputation before this Hon'ble Court. It was contended the except for two affidavits and printouts from the website of the plaintiff no other evidence is placed on record and these cannot be considered for deciding the issue on transborder reputation because the website printouts were admittedly taken a month prior to filing of the suit. These printouts refer to the mark FLEXGRIP as PAPERMATE FLEXGRIP ULTRA, PAPERMATE, ETC. The print outs of pages 8-12 are dated 28th July, 1999 and 23rd August, 1999 and the Suit has been filed in December 1999. The affidavits refer to PAPERMATE rather than FLEXGRIP. Reliance was placed upon the case of The Proctor and Gamble Company versus Satish Patel reported in 1996 PTC 646 to contend that such material would not be sufficient to establish cross border reputation. In this case the plaintiff was a well known multinational and sought to restrain the defendant from using the mark SAFEGUARD which was admittedly registered by the plaintiff in more than 90 countries and had been advertised in well-known magazines like The Time, News Week, Regards Digest. Despite this the Court held that the defendant had been using the marks since 1983 and the same was descriptive. In M/s. Smithkline Beecham Plc. and others versus M/s. Hindustan Lever Limited and other reported in 1999 PTC 775 the plaintiff did not place on record any evidence of any use, reputation or goodwill in the 'S' bend feature of the plaintiff's tooth brush FLEX even internationally prior to Launch in India i.e. in June, 1996. The Court while observing that not a single advertisement was published in India or invoice prior to 1996 to show and indicate subsistence of any goodwill in this country held that:-