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London Rubber Co. Ltd. Vs. Durex Products - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtSupreme Court of India
Decided On
Reported inAIR1963SC1882; [1964]2SCR211
ActsTrade Marks Act, 1940 - Sections 8 and 10(2)
AppellantLondon Rubber Co. Ltd.
RespondentDurex Products
Cases ReferredSno v. Dunn
Books referredHalsbury's Laws of England, Vol. 38
intellectual property rights - honest and concurrent use - sections 8 and 10 (2) of trade marks act, 1940 - appeal deciding question whether deputy registrar of trademark was right in registering trademark 'durex' which first respondent claims to own and issuing on packing of contraceptives manufactured and marketed by it - respondent seemingly honest and concurrent user of trademark - though burden on respondent to establish that there was no reasonable probability of confusion - but such burden not arising in case of honest and concurrent use - no single instance of confusion established by eloquence of fact - there is hardly any likelihood of confusion or deception as respondent's goods confined to contraceptives for use by women which can only be used with medical assistance while.....mudholkar, j.1. in this appeal by a certificate granted by the high court of calcuttaunder art. 133(1)(c) of the constitution, the question which arises forconsideration is whether the deputy registrar of trade marks, calcutta, wasright in admitting to registration the trade mark 'durex' whichrespondent no. 1 claims to own and is using on the packing of the contraceptivesmanufactured and marketed by it. 2. the durex products inc., of new york city, u.s.a. made an applicationbefore the deputy registrar of trade marks on may 28, 1946 for registering themark 'durex' used by it on 'contraceptive devices includingprophylactic sheaths or condrums, vaginal diaphragms, instruments for insertingdiaphragms and models for demonstrating insertion of diaphragms, vaginaljellies, applicators for vaginal.....

Mudholkar, J.

1. In this appeal by a certificate granted by the High Court of Calcuttaunder Art. 133(1)(c) of the Constitution, the question which arises forconsideration is whether the Deputy Registrar of Trade Marks, Calcutta, wasright in admitting to registration the trade mark 'Durex' whichrespondent No. 1 claims to own and is using on the packing of the contraceptivesmanufactured and marketed by it.

2. The Durex Products Inc., of New York City, U.S.A. made an applicationbefore the Deputy Registrar of Trade Marks on May 28, 1946 for registering themark 'Durex' used by it on 'contraceptive devices includingprophylactic sheaths or condrums, vaginal diaphragms, instruments for insertingdiaphragms and models for demonstrating insertion of diaphragms, vaginaljellies, applicators for vaginal jellies and surgical lubricatingjellies.' Its claim is disputed by the London Rubber Co., Ltd., London,the appellant before us by lodging an opposition to the registration on March29, 1951. The appellant claims to be well-established manufacture of surgicalrubber goods and proprietor in India of the trade mark 'Durex' whichit has been using in India since the year 1932 i.e., from the year in which itwas registered in the United Kingdom. On December 23, 1946 the appellantapplied for registration of the word 'Durex' in 'clause X'which application was granted on July 11, 1951. Thereafter, on July 24, 1954the registration was renewed for a period of 15 years as from December 23,1953. The respondent No. 1's application as well as the appellant's oppositioncame up before the Deputy Registrar of Trade Marks who, by order dated December31, 1954, overruled the objection and admitted the mark 'Durex' toregistration as sought by the respondent No. 1 Against this order an appeal waspreferred before the High Court of Calcutta under s. 76 of the Trade Marks Act,1949 which was dismissed by a Division Bench of that Court on March 9, 1959.After obtaining a certificate of fitness from the High Court the appellant hascome up before us.

3. On behalf of the appellant the main contention urged by Mr. Pathak isthat as the marks are identical, deception of various purchasers was inevitableand that, therefore, registration had to be refused under s. 8(a) of the Act.In admitting the mark to registration the Deputy Registrar was, according tohim, in error in applying the provisions of s. 10(2) of the Act inasmuch as theprovisions of s. 8(a) are not subject to those provisions. Further, accordingto him, the requirements of s. 10(2) were not satisfied in this case.

4. Section 8 of the Act reads thus :

'No trade mark nor part of atrade mark shall be registered which consists of, or contains, any scandalousdesign, or any matter the use of which would -

(a) by reason of its being likelyto deceive or to cause confusion or otherwise, be disentitled to protection ina Court of justice; or

(b) be likely to hurt thereligious susceptibilities of any class of the citizens of India; or

(c) be contrary to any law forthe time being in force, or to morality.'

5. On the face of it, this is a general provision which prohibitsregistration of certain kinds of trade marks as indeed would appear from theheading of the section. The appellant's objection to the registration of themark in question would not fall under clause (b) or clause (c) of s. 8 but onlyunder clause (a). It may fall under that clause because by reason of theidentity of the word 'Durex' it would be open to the Registrar to saythat deception of the purchasers or confusion in the purchasers' mind waslikely to occur. Upon the findings in the case it would appear that the appellanthas been using this mark for a long time and has acquired a reputation for itsproducts and since the respondent's mark is identical with it, the DeputyRegistrar would have had to reject the respondent's application if this casewere governed solely by the provisions of s. 8(a). The only remedy for therespondent No. 1 would, in that case, have been to establish its right to themark by instituting a suit for that purpose.

6. The Deputy Registrar, however, as already stated resorted to theprovisions of sub-s. (2) of s. 10 in admitting that mark to registration. Wewill quote whole of s. 10 as the provisions of sub-s. (1) as well as of sub-s.(3) were referred to in the argument before us along with the provisions ofsub-s. (2). Section 10 of the Act reads thus :

'(1) Save as provided insub-section (2), no trade mark shall be registered in respect of any goods ordescription of goods which is indentical with a trade mark belonging to adifferent proprietor and already on the register in respect of the same goodsor description of goods, or which so nearly resembles such trade mark as to belikely to deceive or cause confusion.

(2) In case of honest concurrentuse or of other special circumstances which, in the opinion of the Registrar,make it proper so to do he may permit the registration by more than oneproprietor of trade marks which are identical or nearly resemble each other inrespect of the same goods or description of goods, subject to such conditionsand limitations, if any, as the Registrar may think fit to impose.

(3) Where separate applicationsare made by different persons to be registered as proprietors respectively oftrade marks which are identical or nearly resemble each other, in respect ofthe same goods or description of goods, the Registrar may refuse to registerany of them until their rights have been determined by a competent Court.'

7. On the face of it, sub-s. (2) permits the Registrar or Deputy Registrarto admit to registration marks which are identical or nearly resemble one anotheris respect of the same goods or description of goods provided he is of opinionthat it is proper to do so because there was honest concurrent use of the markby more than one proprietor or because of the existence of specialcircumstances. He would, further, be entitled to impose such conditions on theuser of the mark as he thought fit. Mr. Pathak, however, contends that sub-s.(2) is merely a proviso to sub-s. (1) and as such it cannot apply to a casewhich squarely falls under s. 8(a). Being a proviso to sub-s. (1), the argumentproceeds, it must apply to the matter contained in the main provision and thatsince sub-s. (1) applies only to a case where a competing trade mark is alreadyon the register it cannot apply to a case falling under s. 8(a) which provisiondeals, according to him, only with cases where there is no mark on theregister. He contends that the language used in sub-s. (2) is in materialrespects identical with that used in sub-s. (1) and thus establishes the mutualconnection between the two provisions. A similar argument was advanced beforethe High Court and was rejected by it, in our opinion rightly.

8. If we compare the provisions of s. 8(a) and s. 10(1) it would be clearthat the object of both these provisions is to prohibit from registration markswhich are likely to deceive or cause confusion. Deception or confusion mayresult form the fact that the marks are identical or similar or for some otherreason. While sub-clause (a) of s. 8 is wide enough to cver deception or confusionresulting from any circumstance whatsoever sub-s. (1) of s. 10 is limited todeception or confusion arising out of similarity in or resemblance between twomarks. In other words the enactment of this provision would show that wherethere is identity or similarity in two marks in respect of the same goods orgoods of the same description, registration at the instance of anotherproprietor would be prohibited where a mark is already on the register as beingthe property of another proprietor.

9. The provisions of Sections 8 and 10 of the Act are enabling provisions in thesense that it is not obligatory upon a proprietor of a mark to apply for itsregistration so as to be able to use it. But when a proprietor of a mark, inorder to obtain the benefit of the provisions of the Trade Marks Act, such as alegally protected rights to use it, applies for registration of his mark hemust satisfy the Registrar that it does not offence against the provisions ofs. 8 of the Act. The burden is on him to do so. Confining ourselves to clause(a) the question which the Registrar has to decide is, whether having regard tothe reputation acquired by use of a mark or a name, the mark at the date of theapplication for registration if used in a normal and fair manner in connectionwith any of the goods covered by the proposed registration, will not bereasonably likely to cause deception, and confusion amongst a substantialnumber of persons [See 38 Halsbury's Laws of England, pp. 542, 543.]. What hedecides is a question of fact but having decided it in favour of the applicant,he has a discretion to register it or not to do so vide Re Hack's Application(1940) 58 R.P.C. 91.. But the discretion is judicial and for exercising itagainst the applicant there must be some positive objection to registration,usually arising out of an illegality inherent in the mark as applied for at thedate of application for registration, vide Re Arthur Fairest Ltd's application(1951) 68 R.P.C. 197.. Deception may result from the fact that there is somemisrepresentation therein or because of its resemblance to mark, whetherregistered or unregistered, or to a trade name in which a person other than theapplication had rights vide Sno v. Dunn [1890] 15 A.C. 252.. Where thedeception or confusion arises because of resemblance with a mark which isregistered, objection to registration may come under s. 10(1) as well [See note'k' at p. 542 of 38 Halsbury's Laws of England.]. The provisions in the EnglishTrade Marks Act, 1938 (1 & 2 Geo. 6 c. 22) which correspond to s. 8 and10(1) to 10(3) of our Act are Sections 11 and 12(1) to 12(3). Dealing with theprohibition of registration of identical and similar marks Halsbury has statedat pp. 543-544, Vol. 38, thus.

'Subject to the effect of honest concurrent use orother special circumstances, no trade mark may be registered in respect of anygoods or description of goods that (1) is identical with a trade mark belongingto a different proprietor and already registered in respect of the same goodsor description of goods; or (2) so nearly resembles such a registered trademark as to be likely to deceive or cause confusion.'

10. Since the Trade Marks Act, 1940 is based on the English statute and therelevant provisions are of the same nature in both the laws, though thelanguage of s. 8(a) is slightly different from that of s. 11 of the English Actand that of s. 10(1) from that of s. 12(1) of the English Act, we see no reasonfor holding that the provisions of s. 8(a) would not apply where a markidentical with or resembling that sought to be registered is already on theregister. The language of s. 8(a) is wide and though upon giving full effect tothat language the provisions of s. 10(1) would, in some respects, overlap thoseof s. 8(a), there can be no justification for not giving full effect to thelanguage used by the legislature.

11. It would be useful to set out the comparison between s. 12(1) and s. 11of the English Act made by Kerly on Trade Marks, 8th edn. p. 158. What isstated there is as follows :

'A registration may often berefused under section 11 when refusal could not be justified under section12(1) owing to the goods being of a different description. In other cases wherean opponent is registered but might be unable to prove a reputation for it byuse, section 12(1) is more effective in securing refusal of an application thansection 11, e.g., Huxley's application (1924) 41 R.P.C. 123. Thecriterion which decides whether the Registrar should make the comparison of anapplicant's mark with an opponent's mark under section 11 or under section12(1) is whether he is considering the proved use of the opponent's mark.

Prima facie, however, the scopefor possible confusion under section 12 is wider than the scope for confusionunder section 11.'

12. In the case before us the Deputy Registrar has permitted theregistration of the respondent's mark though it is identical with that of theappellant's and though the appellant's mark was not registered at the date ofthe respondent's application upon the ground of honest concurrent use of themark by the respondent from the year 1928 and also on the ground that there areother special circumstances.

13. Mr. Pathak has challenged the finding about concurrent use and also thefinding that there are special circumstances justifying the registration of therespondent's mark. We shall deal with the arguments advanced by him on thesepoints later in our judgment. For, before we do so we must deal with hisargument, which is indeed his main argument, that the grounds given by theDeputy Registrar for registering the mark are not available in this casebecause it falls under s. 8(a) of the Act and not under s. 10(1).

14. We have already quoted s. 10(2) which empowers the Registrar, in thecase of honest concurrent use or other special circumstances, to permit theregistration by more than one proprietor of trade marks which are identical ornearly resemble each other in respect of the same goods or description ofgoods, subject to such conditions and limitations, if any, as he may think fitto impose. If this provision is considered by itself, upon its plain language itpermits simultaneous registration of identical or similar marks at the instanceof several proprietors, quite irrespective of the question whether an identicalor similar mark is already on the register. The question, however, is whethersub-s. (2) can be regarded by itself or it is, as contended by Mr. Pathak, onlya proviso to sub-s. (1) and being a proviso it must apply only to cases whichare contemplated by the main enacting provision, that is, sub-s. (1) of s. 10.He concedes that sub-s. (2) is not described by the legislature as a provisioto sub-s. (1) but he wants us to construe it as a proviso because it occurs inthe same section as sub-s. (1) and its language is similar to that of sub-s.(1).

15. Mr. Pathak points out, and rightly, that sub-s. (1) of s. 10 dealssolely with a case where a trade mark is already on the register and says thatsince on the date of the application made by the respondent the appellant'smark was not on the register this provision would not apply. The condition forthe applicability of sub-s. (1) is undoubtedly the existence of an identical orsimilar mark on the register, According to him, it is only when this conditionis satisfied that the ban upon registration imposed by sub-s. (1) can be liftedunder sub-s. (2). He lays particular stress on the opening words of sub-s (1)'save as otherwise provided in sub-s. (2)' and contends that fulleffect cannot be given to them unless sub-s. (2) is read with sub-s. (1).

16. In support of this contention he has referred us to Ram Narain SonsLtd., v. Assistant Commissioner of Sales Tax : [1955]2SCR483 . Thatwas a case where this Court was considering the proviso to Art. 286(2) of theConstitution and the Court held that a proviso was meant only to lift the banunder Art. 286(2) and nothing more. Bhagwati J., who delivered the judgment ofthe Court has observed thus :

'It is a cardinal rule of interpretation that aproviso to a particular provision of a statute only embraces the field which iscovered by the main provision. It carves out an exception to the main provisionto which it has been enacted as a proviso and to no other.'

17. These observations, however, must be limited in their application to acase of a proviso properly so called and there is no justification forextending them to a case like the present where the legislature has, when itcould well do so if that were its intention, not chosen to enact it as aproviso. The decision, therefore, affords no support to the contention.

18. The fact that sub-s. (2) is part of the same section as sub-s. (1)cannot justify the conclusion that it was enacted solely for the purpose oflifting the ban enacted by sub-s. (1). Its language is wide enough to embrace amark which is already on the register as well as a mark which is not on theregister at all. The mere fact that sub-s. (1) is made subject to theprovisions of sub-s. (2) cannot justify the narrowing of the scope of thelanguage used by the legislature in sub-s. (2). Indeed, it is the duty of thecourt to give full effect to the language used by the legislature. It has nopower either to give that language a wider or narrower meaning than the literalone, unless the other provisions of the Act compel it to give such othermeaning. Thus, for instance, if there had been no provision like s. 8(a) andthe only provision relating to the prohibition of registration of marks was theone contained in sub-s. (1) of s. 10 the Court would have been compelled toconstrue the language of sub-s. (2) in such a way as to confine its operationto cases which fall under sub-s. (1). Full effect can be given to the openingwords of sub-s. (1) of s. 10 by construing them to mean that sub-s. (1) issubservient to sub-s. (2). No violence is done to those words nor anythingdetracted from their meaning by so construing them. Further, apart from sub-s.(2) there is sub-s. (3) in s. 10. If sub-s. (2) is to be given restrictedmeaning sub-s. (3) also will have to be given a restricted meaning and confinedto cases where there is already a mark on the register. To do so would clearlybe an untenable construction of sub-s. (3). That provision contemplatesapplications by different proprietors for registration of trade marks which areidentical or nearly resemble each other in respect of the same goods ordescription of goods. The competition there contemplated is amongst proprietorswhose marks are not on the register and is not limited to cases in which a markof any other proprietor which is identical or similar to that of thecompetitors is already on the register. For, there is no reference in thatprovision to a proprietor whose mark is already on the register. If, therefore,sub-s. (3) cannot be limited to cases which fall under sub-s. (1) there isadditional reason why sub-2. (2) cannot be so limited either. Then there isanother reason why such a limitation cannot be placed upon the language used insub-s. (2). If it were limited in the manner contended for on behalf of theappellant, the result would be that a mark which is not on the register willget a higher protection than a mark which is already on the register. Thus,honest concurrent use or other special circumstances would never be a groundfor obtaining registration of an identical or similar mark unless there is onthe register already a mark which is identical with or similar to the one markwhich is sought to be registered. That would, indeed, create an extraordinarysituation. As we have already stated, the appellant's mark was in factregistered on July 11, 1951 and if Mr. Pathak's argument is accepted the verynext day after the registration of the appellant's mark it would have been opento the respondent to apply for registration of its mark and the DeputyRegistrar would have had the jurisdiction to register it under sub-s. (2) of s.10, though he lacked that jurisdiction prior to the registration of theappellant's mark. We cannot ascribe to the legislature an intention to createsuch a situation, a situation which can only be described as ludicrous.

19. In our opinion the provisions of sub-s. (2) of s. 10 are by way of anexception to the prohibitory provisions of the Trade Marks Act. Thoseprovisions are contained in s. 8(a) and s. 10(1). It has been held in Bass v.Nicholson (1932) 49 R.P.C. 88., that a trade mark is not necessarily entitledto protection because its use might deceive or cause confusion and, therefore,s. 11 does not override s. 12(2) of the English Act. In Kerly on Trade Marks,8th edn. the position is stated thus :

'It is not correct to consider section 11 withoutany regard to the provisions of other sections of the Act. The generalprohibition contained in section 11 does not cover the cases where the tribunalthinks fit to exercise the discretion conferred by use under section12(2)' (pp. 168-9).

20. In support of this statement of the law reliance is placed on SpillersLtd's Application (1952) 69 R.P.C. 327.. In this case it was contended onbehalf of the appellants before the High Court that as the AssistantComptroller in considering s. 11 had reached the conclusion that confusion waslikely to be caused it was not open to him to exercise any discretion under s.12(2). Danckwerts J., who heard the matter observed :

'This contention renders it necessary to considerthe relations of secs. 11 and 12. For this purpose the decisions on the formersects. 11, 19 and 21 of the Trade Marks Act, 1905, are of the greatestmateriality.' (p. 435).

21. He then considered those decisions and observed at p. 337 thus :

'It seems to me that the construction put by theHouse of Lords in the cases to which I have referred on section 11, 19 and 21of the 1905 Act, must also apply to secs. 11 & 12 of the 1938 Act; and leadto the conclusion that cases where the Court of Registrar thinks fit toexercise the discretion conferred by section 12(2) do not fall within thegeneral prohibition contained in section 11.'

22. No doubt that was a case which fell under s. 12(1) of the English Actbut the view expressed by the learned Judge as well as his further observationssupport the statement of law by Kerly on Trade Marks. The observations of thelearned Judge are :

'This being so, it wouldappear logical in cases which come within section 12(1) to consider firstwhether the case is one in which the discretion conferred by section 12(2)should be exercised so as to allow registration of the mark, and if the answeris in the affirmative, it cannot be necessary to consider section 11separately, because if there are reasons other than resemblance to an existingmark which cause the proposed mark to be disentitled to the protection of theCourt, such reasons must surely affect the exercise of the discretion conferredby section 12(2). It is not possible, as it seems to me, to apply theprovisions of the Act as though they were in separate compartments.

In the result, if there is anylikelihood of confusion being caused, in my view it would not be right tointerfere with the Assistant Comptroller's exercise of the discretion under s.12(2)'.

23. This case was carried right up to the House of Lords. But the view takenby the learned Judge as to the applicability of s. 12(2) even to cases under s.11 was not challenged by the unsuccessful party nor has the House of Lords saidanything which would throw doubt on the correctness of the view taken by thelearned Judge on the point.

24. In Halsbury's Laws of England, Vol. 38, the legal position is statedthus at p. 543 :

'The foregoing provision (s. 11) does not overridethe statutory effect of honest concurrent use and an objection under theforegoing provision may be disposed of if there is evidence that the mark hasbeen honestly used without confusion resulting.'

25. In support of this statement reliance has been placed on Bass v.Nicholson & Sons Ltd. (1932) 49 R.P.C. 88., as well as Alexander Pierie& Sons Ltd.'s Application (1933) 50 R.P.C. 147., and Re Kidax (Shirts)Ltd.'s Application (1960) R.P.C. 117. These decisions have a directbearing upon the provisions which we have to construe here and lend support tothe view which we have taken.

26. The next question for consideration is whether the High Court and theDeputy Registrar were right in coming to the conclusion that there was honestconcurrent use of the mark by the respondent. In the High Court Mr. S. Chaudhariwho appeared for the present appellant conceded that there was honest use inthis case but there was no concurrent use within the meaning of s. 10(2). Theburden of his argument on this point was regarding the volume of the use. Mr.Pathak has confined his argument likewise. Evidence was led in this case onbehalf of the respondent for establishing the volume of use of the mark inIndia. That evidence was accepted by the Deputy Registrar. One piece ofevidence consisted of an affidavit sworn by Florence S. Goodwin, who is thePresident of Durex Products Inc. There, amongst other things, she has stated :'Your deponent knows that Durex Products Incorporated has done asubstantial business in India since 1930.' P.B. Mukherji J., who was oneof the Judges constituting the Bench which heard the case has described thatstatement as 'dependable evidence on which he was prepared to rely andact. He also accepted other affidavits filed in the case as well as the opinionof the Deputy Registrar on the point and then observed :

'The question of volume of use is always a relevantquestion in considering 'honest concurrent use' under section 10(2) of the Act.It depends on the facts of each case. There is no express statutory emphasisthat the use should be large and substantial. Kerly at page 235 of the 7thedition on Trade Marks quotes Lyle and Kinahan Ltd.'s Application 24 R.P.C. 249and other cases for the proposition that it is not necessary for theapplicant's trade to be larger than that of the opponent. My own opinion is thatthe use has to be a business use. It has to be a com-commercial use. Itcertainly will not do if there is only a stray use.'

27. After pointing out that it is not possible to lay down a hard and fastrule on the volume of use necessary under sub-s. (2) of s. 10, he gave apertinent illustration of a small trader who sold goods under a particulartrade mark for a long time though his use or sales were small in comparisonwith big international traders dealing in similar goods bearing a similar trademark and then observed :

'Even so, if there is honest concurrent use Ishould think the small trader is entitled to protection of his trade mark.Trade mark is a kind of property and is entitled to protection under the law,irrespective of its value in money so long as it has some business orcommercial value. Not merely the interest of the public but also the interestof the owner are the subject and concern of trade mark legislation.'

28. With respect, we agree with the learned Judge that in ascertaining thevolume of the use it is relevant to consider the capacity of the applicant tomarket his goods and whether the use was commercial or of other kind. The otherlearned Judge, Bachawat J., observed :

'On the materials on the record I am satisfied thatthe use has been substantial as stated in the affidavit of Florence S.Goodwin.'

29. It was contended by Mr. Pathak that originally only samples of thecontraceptives were exported to India by the respondent and during the waryears their sales were negligible. No doubt, for introducing the goods to Indiasamples were originally sent in the year 1928 or so but subsequent to that, theaffidavit of Goodwin on which reliance has been placed by the High Court andthe Deputy Registrar, shows that substantial quantities of contraceptives wereexported to India. There might have been a diminution in the volume of useduring the war period because of a ban on imports of contraceptives from thedollar area but that was only for a short time. But even before this ban was imposedthe volume of use of the respondent's mark in India was considerable. No hardand fast rule can be laid down regarding the volume of use for the purposes ofsub-s. (2) of s. 10. Ordinarily it would be sufficient if it is shown thatthere was a commercial use of the mark. That there was such a use in this casecannot be disputed. In the circumstances we agree with the High Court and theDeputy Registrar that honest concurrent use of the mark by the respondent for aconsiderable period has been established.

30. This would be sufficient to dispose of the appeal and would have beensufficient for disposing of the appeal before the High Court. The High Courthas, however, considered the alternative ground on which the registration hasbeen ordered. That ground is the existence of special circumstances. Thespecial circumstances are set out fully in the judgment of Mukharji J., andthey are as follows :

'In the first instance the word 'Durex' is the nameof the company itself. The company used its own name on its own product whichevery company should be entitled normally to use unless there be cogent reasonsagainst it. Secondly, the use has been for a considerable period of time. Thecompany was incorporated in January, 1928 in New York. On 24 February, 1930'Durex Products Inc.' applied to the United States Patent Office for theregistration of the trade mark 'Durex' and in that application it is expresslysaid by Florence S. Goodwin's affidavit that the use of the trade mark 'Durex'upon the product is shown for the period beginning from March, 1928. The factis that the user having been established, it would be a hardship now to denyregistration to such an old mark. That also is in my view a factor which couldcertainly be considered under the words 'other special circumstances' insection 10(2) of the Act. Thirdly, the socio-economic consideration of the userof these contraceptives also in my view relate to 'other circumstances' insection 10(2) of the Act. The Deputy Registrar in this case has taken intoconsideration the socio-economic view that contraceptives are necessary in theIndian context for the welfare of the nation. Without expressing my personalview either in favour or against the use of any contraceptive I cannot say thatthe Registrar was wrong in law in paying consideration to the socio-economicreasons for the use of the trade mark 'Durex' for contraceptives in the IndianMarket as relevant under 'other special circumstances.' Fortunately the 'otherspecial circumstances' is the fact that the applicants' mark is largelyconfined to contraceptives for use by women and the appellant' admissioncontained in the letter of 27 October, 1949 from Remfry and son that thepresent application No. 122251 of 'Durex Products Inc.' is for very differentgoods. That also in my view is a special circumstance in this case.'

31. In our opinion the 1st, 2nd and the 4th circumstances can be properlyregarded as special circumstances and would justify the registration, thoughnot the third one. The reason is that a special circumstance must be connectedwith the use of the mark. It has been pointed out in Kerly on Trade Marks atpp. 164-5 thus :

'The words 'or other special circumstances' wereheld in Holt & Co., (Leeds) Ltd's Application (1957) R.P.C. 289, to includeany circumstances peculiar to the application in relation to the subject-matterof the application and this includes use by an applicant of his mark before theconflicting mark was registered or used.'

32. We agree with this view and, therefore, do not regard the thirdcircumstance as relevant. Even so, the other three circumstances would besufficient to justify the registration of the mark.

33. It was faintly argued that the respondent has not discharged the burdenof establishing that there was no reasonable probability of confusion. Thisquestion cannot arise in a case of honest concurrent use. However, we may pointout that the High Court, after observing that the burden was undoubtedly on therespondent to establish that there was no reasonable probability of confusion,has held that that burden is discharged by the eloquent fact that throughoutthere has not been a single instance of confusion. In our opinion there ishardly any likelihood of confusion or deception here because the respondent'sgoods are confined to contraceptives for use by women which can only be usedwith medical assistance while the appellant's contraceptives are essentiallyfor men. Upon this view we uphold the order of the High Court and dismiss theappeal with costs.

34. Appeal dismissed.

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