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901-ia-2077-2023.doc

32. Mr. Sharan Jagtiani has submitted that the seminal case on transborder reputation in Indian jurisprudence is N R Dongre & Ors. Vs. Whirlpool Corporation & Anr.1. He has submitted that the Plaintiff in the said case filed Suit for passing of against the Defendant seeking to restrain it from using the trade mark 'Whirlpool'. The claim of the Plaintiff is based on prior user of the mark and transborder reputation which had spilled over into India. He has submitted that it is pertinent to note that at the time of filing of the Suit, the Plaintiff did not have a registration in India for its mark 'Whirlpool'. The Defendant did. The learned Single Judge in the said case granted the Plaintiff an injunction against the Defendant. Further, the Division Bench dismissed the Appeal and the SLP filed against the Division Bench Order was also dismissed by the Supreme Court. Thus, the findings of the learned Single Judge and Division Bench were confirmed.

33. Mr. Sharan Jagtiani has submitted that the principles of transborder reputation emanating from the decision in N.R. Dongre (Supra) are as follows:-

1 (1996) 5 SCC 714.

901-ia-2077-2023.doc

(i) There is no requirement of actual sale in the markets in India. Goodwill can be held to have permeated into India by virtue of magazines having international circulation including in India. In paragraph 10 of the said judgment, it has been held that, "Even advertisement of trade mark without existence of goods in the market is also to be considered as use of the trade mark."

(ii) Prior user of the mark, even internationally, is a factor to be considered;

(iii) Under Section 27(2) of the Trade Marks Act, the action in passing off is maintainable against a registered user.

34. Mr. Sharan Jagtiani has submitted that the principles laid down in N.R. Dongre (Supra) have been reiterated and applied time and again by Courts in India, including in the judgment of the Division Bench of the Delhi High Court in MAC Personal Care and Anr. V.s Laverana GMBH & Anr.2. In the case of Laverana (Supra), the Division Bench was considered whether the Plaintiff had established transborder reputation. In deciding this issue, the Court rendered 2 2016 SCC OnLine Del 530.

901-ia-2077-2023.doc principles laid down by the Supreme Court in Toyota (Supra), which has been followed by the Delhi High Court in Bolt Technology OU (Supra) and thus no case of passing off the impugned mark with that of the mark of the Plaintiff has been made out.

82. Having considered the rival submissions, it would be necessary to determine whether the Plaintiff has been able to establish transborder reputation in India. The Supreme Court in Toyota (Supra) has laid down the 'Territoriality Principles' on which transborder reputation is to be tested. However, in my view, the law laid down in N.R. Dongre (Supra) on transborder reputation still very much remains with some refinement by the latter decision of the Supreme Court in Toyota (Supra).