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(2) The first respondent, which is the first plaintiff in the suit, is an American Corporation, organized and existing under the laws of the State of Delaware, USA. The second respondent, a Company registered in India, is a joint venture company established by the first respondent and a company called Sundram Clayton. A suit was filed by the respondents on 4th August, 1994 against the appellants for permanent injunction, passing off and damages.

(3) According to the plaint the first respondent is engaged in the manufacture, sale, distribution and servicing of washing machines under the trade mark WHIRLPOOL. It has, directly or through vs subsidiaries, more than 2000 trade mark registrations all over the world. In India its trade mark 'WHIRLPOOL' was registered on February 22, 1956 in respect of clothes dryers, washers, dishwashers, vacuum. cleaners, air- conditioners, dehumidifers, freezers etc. in Classes 7,9 and 11. The registralions were renewed up to the year 1977 hut despite instructions of the first respondent for renewal of registration in Class 7 and 9, the registrations lapsed due to lack of proper communication with its counsel. Notwithstanding the lapsed registration, the trade mark of the first respondent was used in this country through sale of its washing machines to the U.S. Embassy and U.S. Aid offices in New Delhi and also through advertisements in various publications having a circulation in India. Besides the products of the first respondent were reaching the Indian consumers in a second hand State or through indirect channels. Plaint also refers to the recent liberal economic policy as a result whereof, in the year 1987, it established a .joint venture known as Tvs Whirlpool Ltd.' The respondents thereafter filed 9 applications for registration of trade mark 'WHIRLPOOL' in Classes 7,9 and 11 in respect of their goods including washing machines which arc pending in the Trade Mark Registry (4) The plaint also alludes to the fact that the trademark 'WHIRLPOOL' belonging to the first respondent has, acquired global reputation. According to the issue of- July 25, 1994 of 'FORTUNE Global 500' rated the first respondent as the 207th largest Corporation' in the world in terms of sales and the 30th largest Global Corporation dealing in electronic and electrical equipments. It also points out that its name is also included in the 1992 edition of the book 'World Class Business' - a Guide to the 100 Most Powerful Global Corporations," by Phillip Mattero. It also claims that as a result of extensive advertising and promotional efforts, its products including washing machines, have acquired immense reputation and the trade, mark ' WHIRLPOOL' is being associated with the goods of the first respondent.

(5) On August 6, 1986 a Trust known as 'Chinar. Trust' through its trustees, first and second appellants, applied to the' Registrar of.Trade Marks for registration of trade mark 'WHIRLPOOL' in respect of washing machines. In the application it was claimed that the trademark was being used by it since July 1986. The respondents on coming to know about the application of Chinar Trust from the Mark Journal 945 dated October 16, 1988, filed their opposition on January 16, 1989 under section 21(1) of the Trade & Merchandise Marks Act, 1958 (for short 'the Act'). On September 21, 1989 the 'Chinar Trust' filed their counter slatem.enl. Thereafter on December 5, 1990 the respondents in support of their opposition filed an affidavit of one Lawrence John Kremer dated December 5, 1990. On the other hand, the 'Chinar Trust' filed the affidavit of one Mr. Pradeep Singhal 'dated October 3, 1-991. The respondents in reply filed another affidavit of Lawrence Johit. Kremer dated December 19, 1991. On August 12, 1992 the Assistant Registrar of Trade Marks.al Delhi, howevcr,'dismisse'd the opposition of the respondents and accepted the application of 'M/s.Chinar Trust' inter, alia on the ground that knowledge and reputation of the trade mark 'WHIRLPOOL' in respect of the goods of the first respondent was restricted to special feed class of people in India and the same was not sufficient to determine the likelihood of confusion by the use of trade mark by the applicant. The respondents not being satisfied with the order of the Assistant Registrar, Trade Marks, filed an appeal to this Court under section 109(2) of the Act which came to he admitted on February 1, 1993 and is still pending for disposal. On November 30, 1992 trade name 'WHIRLPOOL' was registered by Trade Marks Registry in favor of the 'Chinar Trust', in accordance with the above said order of the Assistant Registrar. On August 4, 1993 the respondents filed a petition under sections 46 and 56 of the Act for cancellation and removal of trade mark registration issued in favor of the 'Chinar Trust'. Thereafter the respondents came across an advertisement in Hindi Daily Dainik Jagran, Lucknow Edition of July 2, 1994 inserted by Sadhna Electric Company, Chander Nagar Market, Lucknow as principal dealer, of 'WHIRLPOOL' washing. machines, requiring dealers for the said machines. The same advertisement appeared in Hindustan Times (Delhi edition) of July 9, 1994 as well. The advertisement interalia mentioned that 'WHIRLPOOL' was the" registered trade, mark of the 'Chinar Trust', New Delhi. The second respondent thereafter purchased a. washing machine marketed by the appellants. This machine was examined by an employee of the respondents and found that the product was inferior to the product manufactured by the first respondent. The respondents approached 'Chinar Trust' for settlement of the dispute hut the latter demanded a large sum of money for giving up its claim to the trade mark 'WHIRLPOOL'. The respondents then Filed :i Miil, being Suit'No.17()5/94, from which this appeal arises. In the suit, the learned Single judge by a detailed order granted ad interim injunction restraining the appellants from manufacturing, selling,, advertising or in any way using the word 'WHIRLPOOL' or any other trade mark deceptively or confusingly similar to the trade mark 'WHIRLPOOL' in respect of the goods of the appellants hut at the same time gave liberty to the appellants to move an application under Order 39 Rule 4 Civil Procedure Code for vacation of the order on the basis of any new material consisting of facts, documents and evidence which they were not able to produce before him. However, the appellants without following the course suggested by the learned Single Judge, have filed the present appeal.

(6) We have heard learned counsel for the parties at length. Before us the learned counsel for the appellants has urged as follows:-

(7) The First respondent abandoned the trade mark 'WHIRLPOOL' by allowing its registration to expire in the year 1977. The respondents did not have any commercial use of the trade mark in India. On the contrary, the appellants had started using the trade mark 'WHIRLPOOL' from 1986,and had also filed an application in the same year for registration of the same in its favor when thcre.was not even an application for registration of the said trade mark by the respondents. 'Chinar Trust' is the only registered proprietor of trade mark 'WHIRLPOOL' in respect of the washing machines etc. The appellants have therefore the exclusive right to use the trade mark in this country. The grant of registration of trade mark on November 30, 1992 with effect from August 6, 1986 gives the appellants exclusive right to use the trade mark under, section 28 of the Act. The effect of injuncting the. appellants from using the trade mark violates section 28(1) of the Act. The order of the learned Single Judge has led to anamolous results. While the appellants who are the proprietors of the trade mark 'WHIRLPOOL' can stop others from using the trade mark 'WHIRLPOOL' they cannot use the same themselves. According to section 28(3) of the Act, two registered proprietors.of the same trade mark cannot restrain one another from using the trade mark.., Therefore even if the first respondent was the registered proprietor of the said trade mark it could not have maintained an action for restraining the appellants from using the trade mark. The lack of registration of the trade mark 'WHIRLPOOL' in favor of the first respondent could not have conferred a higher right than it would have with a registration in its favor. The washing machines manufactured by appellant under trade mark 'WHIRLPOOL' is not being associated with the goods of the respondent but are being identified as the goods of the appellants. The respondents have not sold adequate number of machines in India under the trade mark 'WHIRLPOOL' so as to have acquired any reputation or goodwill in respect of the said trade mark. The respondents were also not entitled to any relief by way of an ad interim injunction in view of delay, acquiescence and laches on their part.

(8) On the other hand, learned counsel for the respondents submitted that the ' trade mark 'WHIRLPOOL' is being used by the first respondent from the year 1941. The first respondent has acquired world wide reputation and goodwill in respect of the trade mark 'WHIRLPOOL'. Washing machines sold under the trade mark 'WHIRLPOOL' are being associated by the general public as the goods of the first respondent. The appellants want to reap the benefit of the reputation and goodwill acquired by the first respondent by using the trade mark 'WHIRLPOOL' on their product. The adoption of the mark by the appellants is not honest and bonafide. The learned Single Judge having passed the ad interim order after properly considering the rival claims of both the parlies, the discretion exercised by him cannot be challenged by asking the appellate Court to reassess the material and reach a conclusion defendant from the one reached by him. The discretion has been exercised by the learned Single Judge reasonably and in a judicial manner. As regards the question of delay, acquiscence and laches, the learned Single Judge correctly came to the conclusion that there was no substance in the submission of the learned counsel for the appellants.