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4/38 2178.12-nmsl "6. It was then sought to be contended by Mr. Shah that, if there was some doubt in regard to the respective rights of the parties, having regard to considerations of balance of convenience, no interlocutory injunction should be granted, and reliance was placed in that connection on a passage from Kerly on Trade Marks, p. 655, para. 654. It is explained there that, by the expression "balance of convenience" is meant the relative amounts of damage which are likely to result if the injunction is granted and the plaintiff ultimately fails, or if it is refused and he ultimately succeeds, and it is stated that where there is a substantial case to be tried, the application for interim injunction may be ordered to stand over to the hearing, upon the defendant undertaking to keep an account of his sales under the mark objected to. There is, however, a statement in the same paragraph which shows clearly that it is not the practice to consider the validity of the registration of the mark on a Motion for interlocutory injunction, and that, whilst a mark remains on the register (even wrongly), it is not desirable that others should imitate it. As far as the cruciform and script marks which have been registered are concerned, the same are registered admittedly in the name of the plaintiff-Co., and an injunction should, therefore, be granted restraining the defendants from infringing1 those marks. It was sought to be stated by the defendants at the hearing of the Motion before me that they are not selling goods bearing the cruciform or script marks, but are only selling goods bearing the Chimney mark, but that statement is false in view of the plaint in the "threats action" (suit No. 493 of 1967) which they have filed in this Court, in para 2 of which it is stated in clear terms that Hernia Embroidery Mills Pvt. Ltd. manufacture and sell textile goods under all the said three marks, and in which a permanent injunction has been sought by the present defendants against the present plaintiffs in respect of all those three marks."

(emphasis supplied)

9. The aforesaid judgment of the Division Bench was carried further before the Apex Court [1996 PTC (16) page 583 (N.R.Dongre v. Whirlpool Corporation)]. While upholding the view taken by learned single and Division Bench of the Delhi High Court, the Apex Court observed thus:

"19. The question now is : whether the exercise of discretion by the trial court is favour of the plaintiffs 18/38 2178.12-nmsl to grant the interlocutory injunction is in accordance with the settled principles of law regulating grant of interlocutory injunctions or not? We think it is so.

border reputation extending to India, the trade mark 'WHIRLPOOL' gives an indication of the origin of the goods as emanating 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 pass-off defendants' washing machines as those of 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 l/3rd of the cost of the plaintiffs' washing machine as stated by Shri 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 19/38 2178.12-nmsl long because of prior user and even otherwise with the plaintiff No.1- Whirlpool Corporation. These factors which have been relied 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.

21. Applying the settled rule indicating the scope:

of interference in an appeal against exercise of discretion by the trial court to grant ah interlocutory injunction, we find no ground to take a different view or to interfere with the grant of the injunction.

22. On the above conclusion reached on the facts of this case, it is unnecessary to refer to the several decisions cited at the bar to indicate the settled principles of law regulating grant or refusal of interlocutory injunctions and the scope for grant of such an injunction in a passing-off action even against the proprietor of a registered trade mark.