London Rubber Co. Ltd. Vs. Durex
Products  INSC 45 (4 March 1963)
04/03/1963 MUDHOLKAR, J.R.
CITATION: 1963 AIR 1882 1964 SCR (2) 211
of--"Durex"-Opposition Marks indentical--Registration allowed by the
Registrar on the grounds of honest concurrents userOrder of the Registrar
restored-Trade Marks Act, 1940(V of 1940), ss. 8 (a), 10 (2).
The respondent made an application before the
Deputy Registrar of Trade Marks for registering the mark, "Durex"
used by it on the packing of the contraceptives manufactured and marketed by
it. The registration was disputed by the appellant on the ground that it has
been using the trade mark "Durex" in India since the year 1932 and
its registration was renewed in the year 1954, for a period of 15 years. The
Deputy Registrar of Trade Marks over ruled the objection and admitted the mark
"Darex" to registration as sought by the respondent. An appeal
preferred to the High Court against this order was also dismissed. The
appellant's main contention in this court was that as the marks are identical,
the registration had to be refused under s. 8 (a) of the Act, the provisions of
which are not subject to the provisions of s. 10 (2). Further, the requirements
of s. 10 (2) were not satisfied in this case and its provisions were not
Held, that though the language of s. 8 (a) is
slightly different from that of s. II of the English Art and that of s. 10 (1)
from that of s. 12 (1) of the English Act, there is no reason for holding that
the provisions of s. 8 (a) would not apply where a mark identical with or
resembling that sought to be registered is already on the register.
The language of s. 8 (a) is wide and though
upon giving full correct to that language the provisions of S. 10 (1) would, in
some respects, overlap those of s. 8 (a), there can be no judification for not
giving full effect to the language used by the legislature: Re Hack's
Application, (1940) 58 R. P. C. 91; Re, Arthur Fairest Ltd's application (1951)
68 R. P. C. 197; Sno v.
Dunn,  15 A. C. 252, referred to.
212 Held, further, that the provision of
Sub-s. (2) of s. IO are by way of an exception to the prohibitory provisions of
the Trade Marks Act. Those provisions are contained in s. 8 (a) and s. 10 (1).
Ram Narain Sons Ltd. v. Assistant
Commissioner of Sales Tax,  2 S. C. R. 483, held inapplicable.
Bass v. Nicholson & Sons Ltd., (1932) 4
R. P. C. 88;
Spillers Ltd's application, (1952) 69 R. P. C.
Alexander Pierice & Sons Ltd's
application, (1933) 50 R. P.
C, 147 and Re Kidax (Shirts) Ltd's
application, (1960) R. P.
C. 117 C.A., relied on.
Held, also, that no hard and fast rule can be
laid down regarding the volume of use for the purposes of Sub-s. (2) of s. 10.
Ordinarily it would be sufficient if it is shown that there was a commercial
use of the mark. There was such a use in this case, cannot be disputed and the
honest concurrent use of the mark by the respondent for a considerable period
has been established. The circumstances in this case can be properly regarded
as special circumstances to justify the registration of the mark and there is
hardly any likelihood of confusion or deception.
CIVIL APPELLATE JURISDICTION : Civil Appeal
No. 26 of 1961.
From the judgment and order dated July 10,
1958 of the Calcutta High Court in Appeal from Original No. 41 of 1955.
G. S. Pathak, B. Sen and D. N. mukherjee, for
H. N. Sanyal, Additional Solicitor-General of
India, A. N. Sinha and B. N. Ghosh, for respondent No. 1.
1963. March 4. The judgment of the Court was
delivered by MUDHOLKAR J.-In. this appeal by a certificate granted by the High
Court of Calcutta under Art. 133 (1) (c) of the Constitution, the question 213
which arises for consideration is whether the Deputy Registrar of Trade Marks,
Calcutta, was right in admitting to registration the trade mark
"Durex" which respondent No.
1 claims to own and is using on the packing
of the contraceptives manufactured and marketed by it.
The Durex Products Inc., of New York City, U.
S. A. made an application before the Deputy Registrar of Trade Marks on May 28,
1946 for registering the mark "Durex" used by it on
"contraceptive devices including prophylactic sheaths or condrums, vaginal
diaphragms, instruments for inserting diaphragms and models for demonstrating
insertion of diaphragms, vaginal jellies, applicators for vaginal jellies and
surgical lubricating jellies." Its claim is disputed by the London Rubber
Co., Ltd., London, the appellant before us by lodging an opposition to the
registration on March 29, 1951. The appellant claims to be well-established
manufacturer of surgical rubber goods and proprietor in India of the trade mark
"Durex" which it has been using in India since the year 1932 i. e.,
from the year in which it was registered in the United Kingdom. On December 23,
1946 the appellant applied for registration of the word "Durex" in
"clause X" which application was granted on July 11, 1951.
Thereafter, on July 24, 1954 the 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 opposition came up before the
Deputy Registrar of Trade Marks who, by order dated December 31, 1954, overruled
the objection and admitted the mark "Durex" to registration as sought
by the respondent No. 1. Against this order an appeal was preferred 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 214 After
obtaining a certificate of fitness from the High Court the appellant has come
up before us.
On behalf of the appellant the main
contention urged by Mr. Pathak is that as the marks are identical, deception of
various purchasers was inevitable and 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 to him, in error in applying the provisions of
s. 10 (2) of the Act inasmuch as the provisions of 8 (a) are not subject to
those provisions. Further, according to him, the requirements of s. 10 (2) were
not satisfied in this case.
Section 8 of the Act reads thus "No
trade mark nor part of a trade mark shall be registered which consists of, or
contains, any scandalous design, or any matter the use of which would (a)
reason of its being likely to deceive or to cause confusion or otherwise, be
disentitled to protection in a Court ofjustice ; or (b) be likely to hurt the
religious susceptibilities of any class of the citizens of India ; or (c) be
contrary to any law for the time being in force, or to morality." On the
face of it, this is a general provision which prohibits registration of certain
kinds of trademarks as indeed would appear from the heading of the section. The
appellant's objection to the registration of the, mark in question would not
fall under cl. (b) or cl. (c) of s. 8 but only under cl. (a). It may fall under
that clause because by reason of the identity of the, word "Durex" it
would be open to 215 the Registrar to say that deception of the purchasers or
confusion in the purchasers' mind was likely to occur. Upon the findings in the
case it would appear that the appellant has been using this mark for a long
time and has acquired a reputation for its products and since the respondent's
mark is identical with it, the Deputy Registrar would have had to reject the
respondent's application if this case were governed solely by the provisions of
s. 8 (a). The only remedy for the respondent No. 1 would, in that case, have
been to establish its right to the mark by instituting a suit for that purpose.
The Deputy Registrar, however, as already
stated, resorted to the provisions of sub-s. (2) of s. 10 in admitting that
mark to registration. We will 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 of sub-s. (2). Section 10 of the Act reads thus :
"(1) Save as provided in sub-section
(2), no trade mark shall be registered in respect of any goods or description
of goods which is indentical with a trade mark belonging to proprietor and
already on the respect of the same goods or description goods, or which so
nearly resemble such trade mark as to be likely to deceive or cause confusion.
(2) In case of honest concurrent use 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 one proprietor of
trade marks which are identical or nearly resemble each other in respect of the
same goods or description of goods, subject to such conditions and limitations,
if any, as the 'Registrar may think fit to impose, 216 (3) Where separate
applications are made by different persons to be registered as proprietors
respectively of trademarks which are identical or nearly resemble each other,
in respect of the same goods or description of goods, the Registrar may refuse
to register any of them until their rights have been determined by a competent
Court." On the face of it, sub-s. (2) permits the Registrar or Deputy
Registrar to admit to registration marks which are identical or nearly resemble
one another in respect of the same goods or description of goods provided he is
of opinion that it is proper to do so because there was honest concurrent use
of the mark by more than one proprietor or because of the existence of special
circumstances. He would, further, be entitled to impose such conditions on the
user 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 case
which squarely falls under s. 8 (a). Being a proviso to sub-s. (1), the
argument proceeds, it must apply to the matter contained in the main provision
and that since sub-s. (1) applies only to a case where a competing trade mark
is already on the register it cannot apply to a case falling under s. 8 (a)
which provision deals, according to him, only with cases where there is no mark
on the register. He contends that the language used in sub-s. (2) is in
material respects identical with that used in sub-s. (1) and thus establishes
the mutual connection between the two provisions. A similar argument was
advanced before the High Court and was rejected by it, in our opinion rightly.
If we compare the provisions of s. 8 (a) and
s. 10 (1) it would be clear that the object of both these provisions is to
prohibit from , registration marks which are likely to deceive or cause confusion.
217 Deception or confusion may result from
the fact that the marks are identical or similar or for some other reason.
While sub-cl. (a) of s. 8 is wide enough to
cover deception or confusion resulting from any circumstance whatsoever subs.
(1) of s. 10 is limited to deception or confusion arising out of similarity in
or resemblance between two marks. In other words the enactment of this
provision would show that where there is identity or similarity in two marks in
respect of the same goods or goods of the same description, registration at the
instance of another proprietor would be prohibited where a mark is already on
the register as being the property of another proprietor.
The provisions of ss. 8 and 10 of the Act are
enabling provisions in the sense that it is not obligatory upon a proprietor of
a mark to apply for its registration so as to be able to us it. But when a
proprietor of a mark, in order to obtain the benefit of the provisions of the
Trade Marks Act, such as a legally protected right to use it, applies for
registration of his mark he must satisfy the Registrar that it does not offend
against the provisions of s. 8 of the Act. The burden is on him to do so.
Confining ourselves to cl. (a) the question which the Registrar has to decide
is, whether having regard to the reputation acquired by use of a mark or a
name, the mark at the date of the application for registration if used in a
normal and fair manner in connection with any of the goods covered by the
proposed registration, will not be reasonably likely to cause deception, and
confusion amongst a substantial number of persons (1). What he decides 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 (2). But
the discretion is judicial and for exercising it against the applicant there
must be some positive objection to registration, (1) See 38 Halsbury's Laws of
England, pp, 542, 543, (2) (1940) 58 R. I. ?. C. 91.
218 usually arising out of' an illegality
inherent in the mark as applied for at the date of application for
registration, vide Re Arthur Fairest Ltd's application (1). Deception may
result from the fact that there is some misrepresentation therein or because of
its resemblance to mark, whether registered or unregistered, or to a trade name
in which a person other than the applicant had rights vide Sno v. Dunn (2).
Where the deception or confusion arises because of resemblance with a mark
which is registered, objection to registration may come under s. 10 (1) as well
(3). The provisions in the English Trade Marks Act, 1938 (1 & 2 Geo.
6 c. 22) which correspond to s. 8 and 10 (1)
to 10 (3) of our Act are ss. II and 12 (1) to 12 (3). Dealing with the
prohibition of registration of identical and similar marks Halsbury has stated
at pp. 543-544, Vol. 38, thus.
"Subject to the effect of honest
concurrent use or other special circumstances, no trade mark may be registered
in respect of' any goods or description of goods that (1) is identical with a
trade mark belonging to a different proprietor and already registered in
respect of the same goods or description of goods ; or (2) so nearly resembles
such a registered trade mark as to be likely to deceive or cause
confusion." Since the Trade Marks Act, 1940 is based on the English
statute and the relevant provisions are of the same nature in both the laws,
though the language of s. 8(a) is slightly different from that of s. 11 of the
English Act and that of s. 10(1) from that of s. 12(1) of the English Act, we
see no reason for holding that the provisions of s. 8(a) would not apply where
a mark identical with or resembling that sought to be registered is already on
the register. The language of s. 8(a) is wide and though upon giving full
effect to that language the provisions of s. 10(1) would, in some respects,
overlap those of s. 8(a), there (1) (1951) 68 R.P.C. 197. (2)  15 A.C.
(3) See note 'k' at p. 542 of 38 Halsbury's
Laws of England.
219 can be no justification for not giving
full effect to the language used by the legislature.
It would be useful to set out the comparison
between s. 12(1) and s. 11 of the English Act made by Kerly on Trade Marks, 8th
edn. p. 158. What is stated there is as follows :
"A registration may often be refused
under section 11 when refusal could not be justified under section 12(1) owing
to the goods being of a different description. In other cases where an opponent
is registered but might be unable to prove a reputation for it by use, section
12(1) is more effective in securing refusal of an application than section 11,
e.g., Huxley's application (1). The criterion which decides whether the
Registrar should make the comparison of an applicant's mark with an opponent's
mark under section 11 or under section 12(1) is whether he is considering the
proved use of the opponent's mark.
Prima facie, however, the scope for possible
confusion under section I'"' is wider than the scope for confusion under
section ll." In the case before us the Deputy Registrar has permitted the
registration of the respondent's mark though it is identical with that of the
appellant's and though the appellant's mark was not registered at the date of
the respondent's application upon the ground of honest concurrent use of the
mark by the respondent from the year 1928 and also on the ground that there are
other special circumstances.
Mr. Pathak has challenged the finding about
concurrent use and also the finding that there are special circumstances
justifying the registration of the, respondent's mark. We shall deal with the
arguments advanced by him on these points later in our (1) (1924) 41 R. P. C.
220 judgment. For, before we do so we must
deal with his argument, which is indeed his main argument, that the grounds
given by the Deputy Registrar for registering the mark are not available in
this case because it falls under s. 8(a) of the Act and not under s. 10(1).
We have already quoted s. 10(2) which
empowers the Registrar, in the case of honest concurrent use or other special
circumstances, to permit the registration by more than one. proprietor of trademarks
which are identical or nearly resemble each other in respect of the same goods
or description of goods, subject to such conditions and limitations, if any, as
he may think fit to impose. If this provision is considered by itself, upon its
plain language it permits simultaneous registration of identical or similar
marks at the instance of several proprietors, quite irrespective of the
question whether an identical or similar mark is already on the register. The
question, however, is whether sub-s. (2) can be regarded by itself or it is, as
contended by Mr. Pathak, only a proviso to sub-s. (1) and being a proviso it
must apply only to cases which are 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 proviso to sub-s. (1) but he wants us to
construe it as a proviso because it occurs in the same section as sub-s. (1)
and its language is similar to that of sub-s. (1).
Mr. Pathak points out, and rightly, that
sub-s. (1) of s. 10 deals solely with a case where a trade mark is already on
the register and says that since on the date of the application made by the
respondent the appellant's mark was not on the register this provision would
not apply. The condition for the applicability of sub-s. (1) is undoubtedly the
existence of an identical or similar mark on the register. According to him, it
is only when this 221 condition is satisfied that the ban upon registration
imposed by sub-s. (1) can be lifted under 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 full effect cannot be given to them unless sub-s.
(2) is read with sub-s. (1).
In support of this contention he has referred
us to Ram Narain Sons Ltd., v. Assistant Commissioner of Sales Tax(,).
That was a case where this Court was
considering the proviso to Art. 286(2) of the Constitution and the Court held
that a proviso was meant only to lift the ban under Art. 286(2) and nothing
more. Bhagwati J., who delivered the judgment of the Court has observed thus :
"It is a cardinal rule of interpretation
that a proviso to a particular provision of a statute only embraces the field
which is covered by the main provision. It carves out an exception to the main
provision to which it has been enacted as a proviso and to no other."
These observations, however, must be limited in their application to a case of
a proviso properly so called and there is no justification for extending them
to a case like the present where the legislature has, when it could we I do so
if that were its intention, not chosen to enact it as a proviso. The decision..
therefore, affords no support to the contention.
The fact that sub-s. (2) is part of the same
section as subs. (1) cannot justify the conclusion that it was enacted solely
for the purpose of lifting the ban enacted by sub-s.
(1). Its language is wide enough to embrace a
mark which is already on the register as well as a mark which is not on the
register at all. The mere fact that sub-s. (1) is made subject to the
provisions of sub-s. (2) cannot justify the narrowing of the scope of the
language used by the (1)  2 S. C. R, 483, 493.
222 legislature in sub-s. (2). Indeed, it is
the duty of the court to give full effect to the language used by the
legislature. It has no power either to give that language a wider or narrower
meaning than the literal one, unless the other provisions of the Act compel it
to give such other meaning. Thus, for instance, if there had been no provision
like s. 8(a) and the only provision relating to the prohibition of registration
of marks was the one contained in sub-s. (1) of s. 10 the Court would have been
compelled to construe the language of sub-s. (2) in = a way as to confine its
operation to cases which fall under sub-s. (1).
Full effect can be given to the opening words
of sub-s. (1) of s. 10 by construing them to mean that sub-s. (1) is
subservient to sub-s. (2). No violence is done to those words nor anything
detracted 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 restricted
meaning sub-s. (3) also will have to be given a restricted meaning and confined
to cases where there is already a mark on the register. To do so would clearly
be an untenable construction of sub-s. (3). That provision contemplates
applications by different proprietors for registration of trademarks which are
identical or nearly resemble each other in respect of the same goods or
description of goods. The competition there contemplated is amongst proprietors
whose marks are not on the register and is not limited to cases in which a mark
of any other proprietor which is identical or similar to that of the
competitors is already on the register. For, there is no reference in that
provision to a proprietor whose mark is already on the register. If, therefore,
subs. (3) cannot be limited to cases which fall under sub-s. (1) there is
additional reason why sub-s. (2) cannot be so limited either. Then there is
another reason why such a limitation cannot be placed upon the language used in
sub-s. (2). If it were limited in the manner contended for on behalf of 223 the
appellant, the result would be that a mark which is not on the register will
get a higher protection than a mark which is already on the register. Thus,
honest concurrent use or other special circumstances would never be a ground
for obtaining registration of an identical or similar mark unless there is on
the register already a mark which is idential with or similar to the one mark
which is sought to be registered. That would,, indeed, create an extraordinary
situation. As we have already stated, the appellant's mark was in fact
registered on July 11, 1951 and if Mr. Pathak's argument is accepted the very
next day after the registration of the appellant's mark it would have been open
to the respondent to apply for registration of its mark and the Deputy
Registrar 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 the
appellant's mark. We cannot ascribe to the legislature an intention to create
such a situation, a situation which can only be described as ludicrous.
In our opinion the provisions of sub-s. (2)
of s. 10 are by way of an exception to the prohibitory provisions of the Trade
Marks Act. Those provisions are contained in s. 8(a) and s. 10 (1). It has been
held in Bass v. Nicholson (1), that a trade mark is not necessarily entitled to
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
II with. out any regard to the provisions of other sections of the Act. The
general prohibition contained in section 11 does not cover the cases where the
tribunal thinks fit to exercise the discretion conferred by use under section
12 (2)" (pp. 168-9).
In support of this statement of the law
reliance is placed on Spillers Ltd's Application (2). In this (1) (1932) 49
R.P.C. 88. (2) (1952) 69 R,P,C, 327, 224 case it was contended on behalf of the
appellants before the High Court that as the Assistant Comptroller in
considering s. 11 had reached the conclusion that confusion was likely 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
consider the relations of secs. 11 and 12. For this purpose the decisions on
the former sects. 11, 19 and 21 of the Trade Marks Act, 1905, are of the
greatest materiality." (p. 435).
He then considered those decisions and
observed at p. 337 thus:
"'It seems to me that the construction
put by the House of Lords in the cases to which I have referred on secs. II, 19
and 21 of the 1905 Act, must also apply to sees. 11 & 12 of the 1938 Act;
and lead to the conclusion that cases where the Court of Registrar thinks fit
to exercise the discretion conferred by sec.
12 (2) do not fall within the general
prohibition contained in sec. II." No doubt that was a case which fell
under s. 12 (1) of the English Act but the view expressed by the learned judge
as well as his further observations support the statement of law by Kerly on
Trade Marks. The observations of the learned judge are :
"This being so, it would appear logical
in cases which come within sec. 12 (1) to consider first whether the case is
one in which the discretion conferred by sec. 12 (2) should be exercised so as
to allow registration of the mark, and if the answer is in the affirmative, it
cannot be necessary to consider sec. 11 separately, 225 because if there are
reasons other than resemblance to an existing mark which cause the proposed
mark to be disentitled to the protection of the Court, such reasons must surely
affect the exercise of the discretion conferred by sec. 1 2 (2). It is not
possible, as it seems to me, to apply the provisions of the Act as though they
were in separate compartments.
In the result, if there is any likelihood of
confusion being caused, in my view it would not be right to interfere with the
Assistant Comptroller's exercise of the discretion under s. 12(2)".
This case was carried right up to the House
of Lords. But the view taken by the learned judge As to the applicability of s.
12 (2) even to cases under s. II was not challenged by the unsuccessful party
nor has the House of Lords said anything which would throw doubt on the
correctness of the view taken by the learned judge on the point.
In Halsbury's Laws of England, Vol. 38, the
legal position is stated thus at p. 543 "The foregoing provision (s. 11)
does not override the statutory effect of honest concurrent use and an
objection under the foregoing provision may be disposed of if there is evidence
that the mark has been honestly used without confusion resulting." In
support of this statement reliance has been placed on Bass v. Nicholson &
Sons Ltd., (1), as well as Alexander Pierie & Sons Ltd.'s Application (2),
and Be Kidax (Shirts) Ltd.'s Application (3). These decisions have a direct
bearing upon the provisions which we have to construe here and lend support to
the view which we have taken.
(1) C 1932) 49 R.P.C. 88. (2) (1933) 50
(3) (1960) R.P.C. 117 C.A 226 The next
question for consideration', is whether the High Court and the Deputy Registrar
were right in coming to the conclusion that there was honest concurrent use of
the mark by the respondent. In the High Court Mr. S. Chaudhari who appeared for
the present appellant conceded that there was honest use in this case but there
was no concurrent use within the meaning of s. 10 (2). The burden 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 on behalf of the
respondent for establishing the volume of use of the mark in India. That
evidence was accepted by the Deputy Registrar. One piece of evidence consisted
of an affidavit sworn by Florence S. Goodwin, who is the President of Durex
Products Inc. There, among* other things, she has stated : "Your deponent
knows that Durex Products Incorporated has done a substantial business in India
since 1930." P. B. Mukherji J., who was one of the Judges constituting the
Bench which heard the case has described that statement as "'dependable
evidence on which he was prepared to rely and act. He also accepted other
affidavits filed in the case as well as the opinion of the Deputy Registrar on
the point and then observed The question of volume of use is always a relevant
question in considering 'honest concurrent use' under section 10 (2) of the
It depends on the facts of each case. There
is no express statutory emphasis that the use should be large and substantial.
Kerly at page 235 of the 7th edition on Trade Marks quotes Lyle and Kinahan
Ltd.'s Application 24 R. P. C. 249 and other cases for the proposition that it
is not, necessary for the applicant's trade to be larger than that of the
opponents My own opinion is that the use has to be a business use. 'It has to
be' a com227 commercial use. It certainly will not do if there is only a stray
use." After pointing out that it is not possible to lay down a hard and
fast rule on the volume of use necessary under subs. (2) of s: 10, he gave a
pertinent illustration of a small trader who sold goods under a particular
trade mark for a long time though his use or sales were small in comparison
with big international trader% dealing in similar goods bearing a similar trade
mark and then observed :
"Even so, if there is honest concurrent
use I should 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 or
commercial value. Not merely the interest of the public but also the interest
of the owner are the subject and concern of trade mark legislation." With
respect, we agree with the learned judge that in ascertaining the volume of the
use it is relevant to consider the capacity of the applicant to market his
goods and whether the use was commercial or of other kind. The other learned
judge, Bachawat J., observed :
"On the materials on the record I am
satisfied that the use has been substantial as stated in the affidavit of
Goodwin." It was contended by Mr. Pathak
that originally only samples of the contraceptives were exported to India by
the respondent and during the war years their sales were negligible. No doubt,
for introducing the goods to India samples were originally sent in the year
1928 or go but subsequent to that, the affidavit of Goodwin on -which reliance
has been placed 228 by the High Court and the Deputy Registrar, shows that
substantial quantities of contraceptives were exported to India. There might
have been a diminution in the volume of use during the war period because of a
ban on imports of contraceptives from the dollar area but that was only for a
short time. But even before this ban was imposed the volume of use of the
respondent's mark in India was considerable.
No hard and fast rule can be laid down
regarding the volume of use for the purposes of sub-s. (2) of s. 10. Ordinarily
it would be sufficient if it is shown that there was a commercial use of the
mark., That there was such a use in this case cannot be disputed. In the
circumstances we agree with the High Court and the Deputy Registrar that honest
concurrent use of the mark by the respondent for a considerable period has been
This would be sufficient to dispose of the
appeal and would have been sufficient for disposing of the appeal before the
High Court. The High Court has, however, considered the alternative ground on
which the registration has been ordered. That ground is the existence of
special circumstances. The special circumstances are set out fully in the
judgment of Mukharji J., and they are as follows :
"In the first instance the word 'Durex'
is the name of the company itself. The company used its own name on its own
product which every company should be entitled normally to use unless there be
cogent reasons against it.
Secondly, the use has been for a considerable
period of time. The company was incorporated in January, 1928 in New York. On
24 February, 1930 "Durex ProductsInc. applied to the United States Patent
Officefor the registration of the trade mark 'Durex' and in that application it
is expressly said by Florence S. Goodwin's affidavit that the use of the trade
mark 'Durex' upon the product is shown 229 for the period beginning from March,
The fact is that the user having been established,
it would be a hardship now to deny registration to such an old mark. That also
is in my view a factor which could certainly be considered under the words
'other special circumstances' in section 10 (2) of the Act.
Thirdly, the socioeconomic consideration of
the user of these contraceptives also in my view relate to 'other
circumstances' in section 10 (2) of the Act. The Deputy Registrar in this case
has taken into consideration the socioeconomic view that contraceptives are
necessary in the Indian context for the welfare of the nation.
Without expressing my personal view either in
favour or against the use of any contraceptive I cannot say that the Registrar
was wrong in law in paying consideration to the socioeconomic reasons for the
use of the trade mark 'Durex' for contraceptives in the Indian Market as
relevant under 'other special circumstances.' Fourthly the 'other special circumstances'
is the fact that the applicants' mark is largely confined to contraceptives for
use by women and the appellants' admission contained in the letter of 27
October, 1949 from Remfry and son that the present application No. 122251 of
'Durex Products Inc.' is for very different goods.
That also in my view is a special
circumstance in this case." In our opinion the 1st, 2nd and the 4th circumstances
car) be properly regarded as special circumstances and would justify the
registration, though not the third one. The reason is that a special
circumstance must be connected with the use of, the mark. It has been pointed
out in Kerly on Trade Marks at pp. 164-5 thus;
"The words "or other special
circumstances' were held in Holt & Co., (Leeds) Ltd'$ 230 Application
(1957) R., P. C. 289, to include any circumstances peculiar to the application
in relation to the subject-matter of the application and this includes use by
an applicant of his mark before the conflicting mark was registered or
used." We agree with this view and, therefore, do not regard the third
circumstance as relevant. Even so, the other three circumstances would be
sufficient to justify the registration-of the mark.
It was faintly argued that the respondent has
not discharged the burden of establishing that there was no reasonable
probability of confusion. This question cannot arise in a case of honest
concurrent use. However, we may point out that the High Court, after observing
that the burden was undoubtedly on the respondent to establish that there was
no reasonable probability of confusion, has held that that burden is discharged
by the eloquent fact that throughout there has not been a single instance of
confusion. In our opinion there is hardly any likelihood of confusion or
deception here because the respondent's goods are confined to contraceptives
for use by women which can only be used with medical assistance while the
appellant's contraceptives arc essentially for men. Upon this view we uphold
the order of the High Court and dismiss the appeal with costs.