Dongre v. Whirlpool (1996)

The Supreme Court protected the WHIRLPOOL mark in India even when a local party held a registration. The Court said the brand had a transborder reputation—Indian consumers already knew it from global use, sales, and publicity. Using the same mark on washing machines by another trader was likely to deceive and amounted to passing off.

• Reputation can cross borders without continuous local use.
• Passing off can restrain even a registered proprietor.
• Consumer association and goodwill are the key tests.

1. Is a passing off action maintainable against a registered proprietor?
2. Did WHIRLPOOL enjoy transborder reputation in India?
3. Does such reputation transcend territorial boundaries for legal protection?

• Transborder Reputation: Goodwill may exist in a country through publicity, ads, trade, and consumer awareness—even without prior local registration.
• Passing Off: Protects goodwill against misrepresentation that causes consumer confusion and damage.
• Registration ≠ shield: A registered proprietor can still be restrained if use is misleading.

The Supreme Court ruled for Whirlpool. It found that WHIRLPOOL had a well-known, transborder reputation in India. The Court restrained Dongre’s use because it was likely to cause confusion and pass off its goods as Whirlpool’s, despite Dongre’s registration.

Goodwill + Likelihood of Confusion = Passing Off. Reputation can be imported through publicity and prior presence. Registration does not authorise deceptive use against a well-known mark with established goodwill among Indian consumers.

• Protects well-known marks without formalities catching up.
• Warns that registration is not a defence to deceit.
• Guides courts on evidence to prove cross-border goodwill.

1. Transborder reputation can protect foreign marks in India.
2. Passing off focuses on consumer confusion, not just registry records.
3. Ads, publicity, past sales, and recognition prove goodwill.
4. Courts may injunct even a registered user if use is misleading.

Mnemonic: W-H-I-R-L = Well-known mark, History of use, India aware, Risk of confusion, Legal restraint.

1. Spot the goodwill (even from abroad).
2. Check if buyers will be confused.
3. Restrain deceptive use—even if registered.

Passing Off

A tort that stops traders from misrepresenting their goods as those of another with goodwill.

Transborder Reputation

Goodwill that crosses national borders through publicity and recognition.

Well-Known Mark

A mark widely recognised by the public, deserving broader protection.