LexLONDON RUBBER CO. LTD. versus DUREX PRODUCTS
Open in Lexace · Ask the AI about this caseJudgment (excerpt)
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2 S.C.R. SUPREME COURT REPORTS
LONDON RUBBER CO. LTD.
v.
DUREX PRODUCTS
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(K. SOBBA RAO, RAGHUBAR DAYAL and
J.R. MUDHOLKAR JJ.).
l
211
Trade
Nark-Registration of-" Durex" -Oppo.1ition-
M ark• indentical-Registration allowed by the Registrar on the
grounds of honest concurrents user- Order of the Registrar
restored-Trade Marks Act, 1940· (V of 19,/0),' 88. 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 an11 its registration was
renewed in the year 1954, for a period of 15 years. The Deputy
R~gistrar of Trade Marks over ruled the objection and admitted
the mark" Durex" to registration as sought ,by. the respondent.
An appeal preferred to the High Court against this order was
also dismi1Jsr:d.
The appellant's main contention in this court
was that as the tnarks 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 require-
-
ments of s. 10 (2) were not satisfied in this case and its provi-
sions were not applicable.
Held, that though the langua~e of s. 8 (a) is slightly
different from that of s. 11 of the English Act and that of
•· 10 (I) from that ofs. 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 effect to that
language the provisions of s. 10 (I) 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 Hac'k's Application, (1940) 58 R, P. C. 91; Re Arthur
Fairest Ltd's application (19'>1) 68 R. P. C. 197; Sno v. Dunn,
[1890] 15 A. C. 252, referred to.
.
·
l1larch 4.
.. · ... ·. ,.
Lo11don Rubbe.r Co
Ltd
••
D.ure.x Products
Muiiul/c., J.
212
SUPREME COURT REPORTS [1964] VOL.
Held, further, that the provision of Sub-s. (2) of s. IO are
by way of an exception to the prohibitory provisiom of the
Trade Marks .~ct. Those provisions are conUiued in s. 8 (a)
ands. 10 (1) .
Ram .• .Varain Son8 Ltd. v . .. :lsaistant 011nunil'8irJn"r of l::i1tlt'8
Tax, [1955) 2 S. C. R. 483, held inapplicab!c.
Bas" v. Nicholson & !:Jons Ltd., (1932) 49 R. P. U. 88;
Spillera Ltd's application, (1952) 69 R. P. C. 327; Alexanrkr
Pitrict &: Sons Ltd'.< application, (1933) 50 R. P. C, 147 aud
Re Kidax (Shirt•) Ltd's application, (1960) R. P. C. 117 C.A.,
relied on.
Held, also, that no hard and fast rule can be laid dowu
regardi'"g the volume of use for the purposes of Sub-s. \2) of
s. IO. Ordinarily it would be sufficient if it is shown that there
was II eommercial use of the mark. There was such a use iu
this i:.se, cannot be disputed and the honest concurrent use of
-\~(' mark by the respondent for a considerable period has been
established. The circumstances in this case can be properly
regarded a' special circumstances to justify the re_gi•tration of
the 'Tll>rk and there is hardly any likelihood of confusirm or
deception.
CIVIL APPELLA1'E J UIUSJJWTION : Civil Appeal
No. 26 of 1961.
From
the
judgment
and
order
dated
July HJ, l!J58 of the Calcutta High Court in Appeal
from Original No. 41 of 1955.
G. S. Pathak, B. Sen and D. N. J:lulclterjee,
for the appellant.
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
MuJJHOLKAR J .-In this appeal by a certi-
ficate granted by the High Court of Calcutta under
Art. 133 (1) (c) of the Constitution, the question
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2 S.C.R.
SUPREME COURT REPORTS 213
which arises
for consideration is whether the
Deputy Registrar of Trade Marks, Calcutta, was
right in admitting to registration fue trade mark
~'Durex" which respondent No. l claims to own and
is using on the packing of the contraceptives manu-
factured and marketed by it.
The Durex Products Ii:tc., 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" usedExcerpt shown. Read the full judgment & AI analysis in Lexace.