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N.R. Dongre And Ors vs Whirlpool Corporation And Anr on 30 August, 1996

The said decision of Whirlpool [N.R. Dongre v. Whirlpool Corpn., 1995 SCC OnLine Del 310 : AIR 1995 Del 300] was further affirmed by the Supreme Court of India in N.R. Dongre v. Whirlpool Corpn. [N.R. Dongre v. Whirlpool Corpn., (1996) 5 SCC 714] xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx I.A. No. 16232/2015 in CS (OS) No. 2368/2015 Page 42 of 63 31.2. The applicability of the said principle can be seen as to which proprietor has generated the goodwill by way of use of the mark/name in the business. The use of the mark/carrying on business under the name confers the rights in favour of the person and generates goodwill in the market. Accordingly, the latter user of the mark/name or in the business cannot misrepresent his business as that of business of the prior right holder. That is the reason why essentially the prior user is considered to be superior than that of any other rights. Consequently, the examination of rights in common law which are based on goodwill, misrepresentation and damage are independent to that of registered rights. The mere fact that both prior user and subsequent user are registered proprietors are irrelevant for the purposes of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder/former user. That is the additional reasoning that the statutory rights must pave the way for common law rights of passing off. (emphasis supplied)
Supreme Court of India Cites 8 - Cited by 347 - Full Document

Midas Hygiene Industries P. Ltd. And ... vs Sudhir Bhatia And Ors. on 22 January, 2004

83. Moreover, the plea of acquiescence fails also, as it prima facie appears that the impugned mark has been dishonestly adopted. The Supreme Court in Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia, (2004) 3 SCC 90, held that "The law on the subject is well settled. In cases of infringement either of Trade Mark or Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.". The defendants therein had failed to provide an explanation as to why their cartons had the mark "LAXMAN REKHA", which was similar to the plaintiffs mark and contained colors of red, white and blue to look almost identical to that of the plaintiffs. This act, the Court held, prima facie, indicated the dishonest intention to pass off his goods as that of the appellants. (emphasis supplied)
Supreme Court of India Cites 1 - Cited by 411 - Full Document
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