Case Note & Summary
The dispute concerned the registration of the trade mark 'Durex' for contraceptive devices and related products. The respondent, Durex Products Inc. of New York, applied on May 28, 1946, to register the mark 'Durex' in respect of various contraceptive and surgical items. The appellant, London Rubber Co. Ltd., a well-established manufacturer of surgical rubber goods, opposed the application on March 29, 1951, claiming proprietary rights in India in the identical mark 'Durex' since 1932, with registration in India applied for on December 23, 1946, granted on July 11, 1951, and renewed on July 24, 1954 for fifteen years. The Deputy Registrar of Trade Marks, Calcutta, by order dated December 31, 1954, overruled the opposition and admitted the mark to registration under Section 10(2) of the Trade Marks Act, 1940, on grounds of honest concurrent use. The High Court of Calcutta dismissed the appellant's appeal on March 9, 1959, and the matter came before the Supreme Court by certificate under Article 133(1)(c) of the Constitution. The core legal question was whether Section 8(a) of the Trade Marks Act, 1940, which prohibits registration of marks likely to deceive or cause confusion, operated as an absolute bar notwithstanding the exception in Section 10(2) for honest concurrent use or special circumstances. The appellant contended that since the marks were identical, deception was inevitable and registration had to be refused under Section 8(a); it argued that Section 10(2) was merely a proviso to Section 10(1) and could not override the general prohibition in Section 8(a). It also contended that the requirements of Section 10(2) were not satisfied. The respondent relied on honest concurrent use and special circumstances, asserting that registration would not cause confusion. The Supreme Court rejected the appellant's argument, holding that the language of Section 8(a) is wide enough to cover cases where a similar or identical mark is already on the register, and that Section 10(2) is by way of an exception to the prohibitory provisions contained in both Section 8(a) and Section 10(1). The Court observed that no hard and fast rule can be laid down regarding the volume of use for the purposes of Section 10(2), and commercial use is ordinarily sufficient. The Court found that honest concurrent use by the respondent for a considerable period was established, and the circumstances could be properly regarded as special circumstances to justify registration, with hardly any likelihood of confusion or deception. Accordingly, the appeal was dismissed and the order of the Registrar allowing registration was upheld.
Headnote
A) Trade Mark Law - Registration of Identical Marks - Prohibition under Section 8(a) - Trade Marks Act, 1940, Section 8(a) - Section 8(a) is a general prohibition against registration of marks likely to deceive or cause confusion, not limited to cases where no mark is on the register; it applies equally when an identical or similar mark is already registered. Held that the language of Section 8(a) is wide and its overlap with Section 10(1) does not preclude its application. (Paras not mentioned) B) Trade Mark Law - Honest Concurrent Use - Exception to Prohibition - Trade Marks Act, 1940, Section 10(2) - Section 10(2) is an exception to the prohibitory provisions contained in Section 8(a) and Section 10(1), enabling registration of identical or similar marks by more than one proprietor upon honest concurrent use or special circumstances. Held that the Registrar's discretion is judicial and the provision applies notwithstanding the absolute language of Section 8(a). (Paras not mentioned) C) Trade Mark Law - Volume of Use - Requirement of Commercial Use - Trade Marks Act, 1940, Section 10(2) - No hard and fast rule for volume of use to establish honest concurrent use; commercial use is ordinarily sufficient. In the present case, honest concurrent use by the respondent for a considerable period was established, and special circumstances justified registration, with no likelihood of confusion or deception. Held that registration was properly allowed. (Paras not mentioned) D) Trade Mark Law - Registrar's Discretion - Judicial Exercise - Trade Marks Act, 1940, Sections 8 and 10 - The Registrar's discretion to permit registration under Section 10(2) must be exercised judicially; the burden is on the applicant to show no offence against Section 8; positive objection required to refuse registration. Held that the discretion was properly exercised in favour of the respondent. (Paras not mentioned)
Issue of Consideration
Whether Section 10(2) of the Trade Marks Act, 1940 can override the prohibition under Section 8(a); whether honest concurrent use and special circumstances were established to justify registration of an identical trade mark.
Final Decision
Appeal dismissed. Registration of trade mark 'Durex' allowed based on honest concurrent use and special circumstances; no likelihood of confusion or deception.
Law Points
- Section 8(a) of Trade Marks Act
- 1940 prohibits registration of marks likely to deceive or cause confusion
- Section 10(2) is an exception to prohibitory provisions of Section 8(a) and Section 10(1) for honest concurrent use or special circumstances
- no hard and fast rule for volume of use
- commercial use suffices
- Registrar's discretion to permit registration is judicial
- overlapping of Section 8(a) and Section 10(1) does not preclude application.
