1963 (3) TMI 84 - SC - Indian Laws

Summary

Issues Involved:
1. Admissibility of the trade mark "Durex" for registration.
2. Application of Section 8(a) of the Trade Marks Act.
3. Application of Section 10(2) of the Trade Marks Act.
4. Honest concurrent use of the trade mark.
5. Special circumstances justifying registration.
6. Likelihood of confusion or deception.

Detailed Analysis:

1. Admissibility of the trade mark "Durex" for registration:
The primary issue is whether the Deputy Registrar of Trade Marks, Calcutta, was correct in admitting the trade mark "Durex" for registration, which the respondent claims to own and use for contraceptives. The appellant opposed this registration, claiming prior use and registration of the same trade mark in India since 1932.

2. Application of Section 8(a) of the Trade Marks Act:
Section 8(a) prohibits the registration of any trade mark that is likely to deceive or cause confusion. The appellant argued that due to the identical nature of the marks, deception of purchasers was inevitable, necessitating refusal of registration under Section 8(a). The court noted that Section 8(a) is a general provision prohibiting the registration of marks likely to deceive or cause confusion. If the case was governed solely by Section 8(a), the Deputy Registrar would have had to reject the respondent's application.

3. Application of Section 10(2) of the Trade Marks Act:
Section 10(2) allows the Registrar to permit the registration of identical or nearly resembling marks in cases of honest concurrent use or other special circumstances. The appellant argued that Section 10(2) is merely a proviso to Section 10(1) and cannot apply to cases falling under Section 8(a). The court rejected this argument, stating that Section 10(2) can be considered by itself and permits simultaneous registration of identical or similar marks, irrespective of whether an identical or similar mark is already on the register.

4. Honest concurrent use of the trade mark:
The court examined whether there was honest concurrent use of the mark by the respondent. Evidence, including an affidavit by Florence S. Goodwin, indicated substantial business in India since 1930. The court agreed with the High Court and the Deputy Registrar that honest concurrent use of the mark by the respondent for a considerable period had been established, noting that the volume of use is relevant but not necessarily large or substantial.

5. Special circumstances justifying registration:
The court considered whether there were special circumstances justifying the registration. The High Court identified several special circumstances:
- The word "Durex" is the name of the respondent company.
- The respondent had used the mark for a considerable period.
- The socio-economic consideration of the use of contraceptives.
- The respondent's mark is largely confined to contraceptives for women, while the appellant's products are for men.
The court agreed with the first, second, and fourth circumstances as justifying registration but did not consider the socio-economic consideration relevant.

6. Likelihood of confusion or deception:
The court addressed whether the respondent had discharged the burden of establishing no reasonable probability of confusion. The High Court found that there had been no instances of confusion, and the court agreed, noting the distinct nature of the products (contraceptives for women vs. men). The court concluded there was hardly any likelihood of confusion or deception.

Conclusion:
The Supreme Court upheld the order of the High Court, dismissing the appeal with costs. The court found that the registration of the trade mark "Durex" by the respondent was justified based on honest concurrent use and special circumstances, and there was no reasonable probability of confusion or deception.