London Rubber Co. Ltd vs Durex Products
Rewritten Version Notice: This is a rewritten version of the original judgment.
Court: Supreme Court of India
Case Number: Civil Appeal No. 26 of 1961
Decision Date: 4 March 1963
Coram: J.R. Mudholkar, Raghubar Dayal
In this case the Supreme Court of India delivered its judgment on 4 March 1963. The matter was recorded as London Rubber Co. Ltd versus Durex Products. The judgment was authored by Justice J. R. Mudholkar, who sat on the bench together with Justice Raghubar Dayal and Justice Subbarao K. Dayal. The petitioner was London Rubber Co. Ltd and the respondent was Durex Products. The official citation for the decision is 1963 AIR 1882 and 1964 SCR (2) 211. The dispute concerned the registration of the trade mark “Durex” under the Trade Marks Act of 1940, specifically sections 8(a) and 10(2). The respondent had applied to the Deputy Registrar of Trade Marks for registration of the mark “Durex”, which it used on the packaging of contraceptives that it manufactured and marketed. The petitioner opposed this application, asserting that it had been using the same trade mark in India since 1932 and that the mark had been renewed in 1954 for a period of fifteen years. The Deputy Registrar over‑ruled the petitioner’s objection and allowed the registration of the mark “Durex” as sought by the respondent. The petitioner appealed this decision to the High Court, but the High Court dismissed the appeal, leaving the registration in force.
The petitioner’s principal argument before this Court was that because the marks were identical, the registration should have been refused under section 8(a) of the Trade Marks Act, and that the provisions of section 10(2) could not override the prohibitions set out in section 8(a). The petitioner further contended that the conditions required by section 10(2) had not been satisfied in the present circumstances, and therefore that section 10(2) should not apply. The Court examined the language of section 8(a) and noted that, although it is worded slightly differently from section II of the English Trade Marks Act and from section 10(1) of the same English statute, there is no justification for holding that section 8(a) does not apply when a mark identical with or resembling the mark sought to be registered already exists on the register. The Court observed that the wording of section 8(a) is broad, and even if the full effect of that wording causes some overlap with the provisions of section 10(1), the legislature’s language must be given its full effect. In reaching this conclusion, the Court referred to earlier authorities including Re Hack’s Application (1940) 58 R.P.C. 91, Re Arthur Fairest Ltd’s Application (1951) 68 R.P.C. 197, and Sno v. Dunn [1890] 15 A.C. 252.
Further, the Court held that the exception provided in sub‑section (2) of section 10 operates as a carve‑out to the prohibitory provisions of the Trade Marks Act that are found in sections 8(a) and 10(1). The Court noted that the decision in Ram Narain Sons Ltd. v. Assistant Commissioner of Sales Tax [1955] 2 S.C.R. 483 was not applicable to the present matter. The Court also cited additional authorities such as Bass v. Nicholson & Sons Ltd. (1932) 4 R.P.C. 88 and Spillers Ltd’s Application (1952) 69 R.P.C., which supported its interpretation of the statutory scheme. In sum, the Court concluded that the registration of the mark “Durex” could be upheld despite the petitioner’s earlier use, because the statutory provisions allowing registration in cases of honest concurrent use were met, and the language of the Act required a broad application of its prohibitory sections.
The Court noted that the authorities cited, namely the applications of Alexander Pierice and Sons Ltd reported in the 1933 volume of the Reports of the Patent Cases at page 147, and the decision in Re Kidax (Shirts) Ltd reported in the 1960 volume of the Reports of the Patent Cases at page 117 of the Court of Appeals, were relied upon in reaching its conclusions. It further held that no absolute rule could be prescribed concerning the amount of use required for the purposes of sub‑section (2) of section 10. The Court explained that, in ordinary circumstances, it would be enough to demonstrate that the trade mark had been employed commercially. In the present matter, the Court found that such commercial use had undeniably occurred and could not be contested. Moreover, the Court observed that the respondent had honestly and continuously used the mark for a substantial period, establishing a record of concurrent use. Considering the facts, the Court concluded that the situation presented qualified as special circumstances that justified allowing registration of the mark, and it determined that the probability of confusion or deception among the public was minimal.
The judgment was issued in a civil appellate jurisdiction concerning Civil Appeal No. 26 of 1961, arising from the judgment and order dated 10 July 1958 of the Calcutta High Court in appeal from Original No. 41 of 1955. Counsel for the appellant comprised senior advocates, while counsel for respondent No. 1 included the Additional Solicitor‑General of India and other counsel. The judgment, delivered on 4 March 1963 by Justice Mudholkar, addressed the question whether the Deputy Registrar of Trade Marks, Calcutta, was correct in permitting the registration of the trade mark “Durex” claimed by respondent No. 1 and used on the packaging of its contraceptive products. The facts disclosed that Durex Products Inc., a company based in New York City, United States, had filed an application with the Deputy Registrar on 28 May 1946 to register the mark “Durex” for a range of contraceptive devices, including prophylactic sheaths, vaginal diaphragms, insertion instruments, demonstration models, vaginal jellies, applicators, and surgical lubricating jellies. This claim was opposed by the London Rubber Co., Ltd., a well‑established manufacturer of surgical rubber goods, which lodged its opposition on 29 March 1951, asserting ownership of the “Durex” mark in India since 1932, the same year it had been registered in the United Kingdom. The appellant had applied for registration of the word “Durex” in clause X on 23 December 1946, and the application was granted on 11 July 1951. The registration was subsequently renewed on 24 July 1954 for a period of fifteen years effective from 23 December 1953. Both the respondent’s application and the appellant’s opposition were considered by the Deputy Registrar, who, by order dated 31 December 1954, dismissed the objection and admitted the mark “Durex” to registration in favour of respondent No. 1. An appeal against this order was then brought before the High Court of Calcutta under section 76 of the Trade Marks Act, 1949, and the appeal was dismissed by a division bench on 9 March 1959. After obtaining a certificate of fitness from the High Court, the appellant sought review before the Supreme Court.
The appellant appealed the order of the Deputy Registrar before the High Court of Calcutta invoking section 76 of the Trade Marks Act, 1949, but the Division Bench of that court dismissed the appeal on 9 March 1959. After obtaining a certificate of fitness from the High Court, the appellant again came before this Court. Counsel for the appellant argued that, because the two marks were identical, purchasers would inevitably be deceived, and consequently registration should have been refused under section 8(a) of the Act. He further maintained that the Deputy Registrar had erred in applying the provisions of subsection 2 of section 10, since the prohibition in section 8(a) was not subject to the discretion afforded by section 10. In his view, the conditions required by subsection 2 of section 10 had not been satisfied in the present case. Section 8 of the Act provides that no trade mark nor any part of a trade mark may be registered if it consists of, or contains, any scandalous design, or any matter whose use would (a) because it is likely to deceive or cause confusion, be disallowed by a court of justice; (b) be likely to offend the religious sensibilities of any class of citizens of India; or (c) be contrary to any law in force or to morality. This provision is a general bar to registration of certain categories of marks, as the heading of the section indicates. The appellant’s objection did not fall within sub‑clauses (b) or (c); it sought relief only under sub‑clause (a). The argument under sub‑clause (a) was that the identical use of the word “Durex” would permit the Registrar to conclude that deception or confusion among purchasers was likely. The factual findings showed that the appellant had employed the mark for a long period and had built a reputation for its products. Because the respondent’s mark was identical, the Deputy Registrar would, if the case were governed solely by section 8(a), have been obliged to reject the respondent’s application. In that circumstance, the only remedy available to respondent No 1 would have been to establish a right to the mark by instituting a suit. Nevertheless, the Deputy Registrar, as noted, relied on subsection 2 of section 10 to admit the mark to registration. For completeness, the entire text of section 10 was quoted, since arguments before this Court referred to subsections 1, 2 and 3. Section 10 states, in subsection 1, that except as provided in subsection 2, no trade mark shall be registered in respect of any goods or description of goods that is identical with a trade mark belonging to another proprietor already used for the same goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion. Subsection 2 allows the Registrar, in cases of honest concurrent use or other special circumstances, to permit registration of identical or similar marks by more than one proprietor for the same goods, subject to conditions deemed appropriate. Subsection 3 provides that where separate applications for identical or similar marks for the same goods are made by different persons, the Registrar may refuse registration of any of them until a competent court determines the respective rights.
The Act states that a trade mark shall not be entered on the register in respect of any goods or description of goods if the mark is identical to a trade mark already owned by another proprietor for the same goods or description of goods, or if the mark so nearly resembles that existing trade mark that it is likely to deceive or cause confusion. Sub‑section two provides that, where there has been honest concurrent use of the mark by more than one proprietor, or where other special circumstances exist that, in the Registrar’s opinion, justify it, the Registrar may allow the registration of marks that are identical or that closely resemble each other for the same goods or description of goods. The Registrar may impose any conditions or limitations that he deems appropriate on the use of the marks. Sub‑section three adds that if different persons file separate applications to register identical or closely resembling marks for the same goods or description of goods, the Registrar may refuse to register any of the applications until a competent court determines the respective rights of the parties.
The plain reading of sub‑section two suggests that the Registrar or Deputy Registrar is empowered to accept registration of marks that are identical or closely resemble each other for the same category of goods, provided he is satisfied that the circumstances are honest concurrent use or some other special situation. The Registrar also has the authority to prescribe conditions that the applicant must follow in using the mark. However, counsel for the petitioner argues that sub‑section two functions only as a proviso to sub‑section one and therefore cannot be applied to a case that falls squarely under section eight, clause a. The argument is that, being a proviso, sub‑section two must operate only in relation to the substantive provision in sub‑section one, which deals with situations where a competing trade mark is already entered on the register. Consequently, it would not apply to a case governed by section eight, clause a, which, according to the petitioner, deals exclusively with situations where no earlier mark exists on the register. The petitioner further contends that the language of sub‑section two mirrors that of sub‑section one in material respects, establishing a close connection between the two provisions.
The same line of argument was previously presented before the High Court, and the High Court rejected it. In the present view, that rejection is considered appropriate. A comparison of section eight, clause a, with section ten, sub‑section one, shows that both provisions aim to prevent the registration of marks that are likely to deceive or cause confusion. Deception or confusion may arise because the marks are identical or similar, or for other reasons. While sub‑clause a of section eight is broad enough to encompass deception or confusion arising from any circumstance, sub‑section one of section ten limits its scope to deception or confusion that stems specifically from similarity or resemblance between two marks.
The Court explained that the purpose of the provision is to prevent deception or confusion that arises from similarity or resemblance between two marks. In other words, the enactment shows that when two marks are identical or merely similar with respect to the same goods or goods of the same description, the registration of a mark by another proprietor is prohibited if a mark already exists on the register as the property of a different proprietor. The Court noted that sections 8 and 10 of the Act are enabling provisions, meaning that a proprietor is not compelled to apply for registration in order to use the mark. Nevertheless, when a proprietor seeks registration in order to obtain the benefits of the Trade Marks Act, such as a legally protected right of use, the applicant must satisfy the Registrar that the proposed mark does not offend the provisions of section 8. The burden of proof therefore lies with the applicant.
Focusing on clause (a), the Court stated that the Registrar must determine, having regard to the reputation acquired by use of an existing mark or name, whether the mark as of the date of application, 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 among a substantial number of persons (1). The Court described this determination as a question of fact. Once the Registrar decides in favour of the applicant, he retains a discretion to either register the mark or decline registration, as noted in Re Hack’s Application (2). The Court emphasized that this discretion is judicial, and that refusing registration requires a positive objection, usually an illegality inherent in the mark at the date of application, as illustrated in Re Arthur Fairest Ltd’s application (1).
The Court observed that deception may stem from a misrepresentation contained in the mark or from its resemblance to another mark, whether that mark is registered or unregistered, or to a trade name over which a person other than the applicant has rights, as held in Sno v. Dunn (2). When deception or confusion originates from resemblance to a mark that is already registered, an objection to registration may also be made under section 10(1) (3). The Court further compared the English Trade Marks Act 1938, sections II and 12(1)‑(3), which correspond to sections 8 and 10(1)‑(3) of the Indian Act. Referring to Halsbury’s commentary, the Court quoted that, “Subject to the effect of honest concurrent use or other special circumstances, no trade mark may be registered in respect of …” as stated on pages 543‑544 of volume 38, with a citation to 38 Halsbury’s Laws of England, pp. 542‑543 (1).
The statute provides that registration may not be granted for any goods or description of goods when the mark (1) is identical to a trade mark that belongs to another proprietor and that other mark is already registered for the same goods or description of goods, or (2) so closely resembles such a registered trade mark that it is likely to deceive or cause confusion. The Court observed that the Trade Marks Act of 1940 was modeled on the English statute and that the relevant provisions in the two enactments are of the same character. Although the wording of section 8(a) differs slightly from section 11 of the English Act and the wording of section 10(1) differs from section 12(1) of the English Act, the Court found no reason to hold that the operation of section 8(a) would be excluded where an identical or closely resembling mark is already entered on the register. The language of section 8(a) is broad, and even if full effect is given to that language the provisions of section 10(1) would, in certain respects, overlap those of section 8(a). The Court noted that there is no justification for refusing to give full effect to the language chosen by the legislature, and cited the authorities (1951) 68 R.P.C. 197, [1890] 15 A.C. 252 and the note ‘k’ at page 542 of volume 38 of Halsbury’s Laws of England. For the purpose of comparison, the Court referred to the analysis in Kerly on Trade Marks, eighth edition, page 158, which sets out the relationship between section 12(1) of the Indian Act and section 11 of the English Act. That source explains that a registration may often be refused under section 11 when a refusal could not be justified under section 12(1) because the goods are of a different description. In other situations, where an opponent’s mark is registered but the opponent cannot demonstrate a reputation through use, section 12(1) is more effective than section 11 in securing refusal, as illustrated by Huxley’s application. The determining factor for the Registrar, according to that commentary, is whether the Registrar is considering the proved use of the opponent’s mark. Prima facie, the scope for possible confusion under section 11 is broader than the scope for confusion under section 12. In the present case, the Deputy Registrar allowed the registration of the respondent’s mark even though it was identical to the appellant’s mark and the appellant’s mark was not registered at the time of the respondent’s application. The Deputy Registrar relied on the ground of honest concurrent use of the mark by the respondent since 1928 and on the existence of other special circumstances. The appellant, through counsel, challenged both the finding of honest concurrent use and the finding that special circumstances justified the registration of the respondent’s mark. The Court indicated that it would address the submissions made on those points later in its judgment, but first it needed to consider the appellant’s primary argument that the grounds relied upon by the Deputy Registrar are unavailable because the matter falls under section 8(a) rather than section 10(1).
In this case the appellant’s counsel argued that the reasons supplied by the Deputy Registrar for allowing the registration of the respondent’s mark could not be applied because the matter fell within section 8(a) of the Act rather than within section 10(1). The Court recounted that section 10(2) authorises the Registrar, where there is honest concurrent use or other special circumstances, to permit registration by more than one proprietor of trademarks that are identical or closely resemble each other in relation to the same goods or description of goods, subject to any conditions or limitations that the Registrar may deem appropriate. If this provision is read in isolation, its plain language appears to allow simultaneous registration of identical or similar marks by several owners, irrespective of whether an identical or similar mark is already entered on the register. The Court then examined whether subsection (2) should be read as a standalone provision or, as the appellant’s counsel contended, merely as a proviso to subsection (1) and therefore applicable only to situations contemplated by the main provision, namely subsection (1) of section 10. The counsel acknowledged that the legislature does not label subsection (2) as a proviso to subsection (1), but argued that it should be interpreted as such because it is situated in the same section and its wording resembles that of subsection (1). The counsel further pointed out, correctly, that subsection (1) of section 10 deals exclusively with cases where a trademark is already on the register, and therefore, because the appellant’s mark was not on the register at the time of the respondent’s application, subsection (1) would not apply. The condition for the operation of subsection (1) is undeniably the existence of an identical or similar mark on the register, and according to the counsel, only when that condition is satisfied can the prohibition on registration contained in subsection (1) be lifted by subsection (2). The counsel emphasized the opening words of subsection (1), “save as otherwise provided in sub‑s. (2)”, and maintained that these words cannot be given full effect unless subsection (2) is read in conjunction with subsection (1). To support this view the counsel referred to the decision in Ram Narain Sons Ltd. v. Assistant Commissioner of Sales Tax, where the Court examined a proviso to Article 286(2) of the Constitution and held that a proviso is intended solely to remove the bar created by the main provision and nothing more.
The Court noted that the observations made in that decision must be confined to situations where a genuine proviso is at issue, and that there is no justification for extending those principles to the present circumstance, where the legislature, if it had intended otherwise, could have expressly drafted subsection (2) as a proviso. Consequently, the earlier judgment did not support the appellant’s counsel’s contention. The Court further observed that the mere fact that subsection (2) appears in the same section as subsection (1) does not demonstrate that it was enacted exclusively to lift the prohibition created by subsection (1). The language of subsection (2) is sufficiently broad to encompass both a mark that is already on the register and a mark that has never been entered on the register. The Court concluded that the presence of subsection (1) being subject to subsection (2) cannot be used to narrow the scope of the broader language employed by the legislature in subsection (2). Accordingly, the Court held that subsection (2) should be given its full, independent effect, permitting registration even when the earlier mark is not present on the register, and rejected the argument that the provision operates only as a narrow exception to subsection (1).
In this case the Court noted that the earlier observations concerning the effect of a proviso apply only when a provision is expressly drafted as a proviso, and there is no justification for extending those observations to the present provision because the legislature, although it could have chosen to enact sub‑section (2) as a proviso, deliberately did not do so. Consequently the earlier decision offers no support to the argument advanced by the appellant.
The Court further explained that the mere fact that sub‑section (2) lies in the same section as sub‑section (1) does not permit the conclusion that sub‑section (2) was enacted solely to remove the ban created by sub‑section (1). The language of sub‑section (2) is sufficiently broad to cover both a trade mark that is already entered in the register and a trade mark that is not entered at all. The Court emphasized that the fact sub‑section (1) is made subject to the provisions of sub‑section (2) cannot be used to narrow the scope of the language employed by the legislature in sub‑section (2) [955] 2 S. C. R, 483, 493.
The Court stated that it is the duty of the Court to give full effect to the language used by the legislature and that the Court has no power to expand or contract that language beyond its plain meaning, unless other provisions of the Act compel such a different construction. For example, if there were no provision such as section 8(a) and the only rule concerning the prohibition of registration of marks was the one in sub‑section (1) of section 10, the Court would have been forced to interpret sub‑section (2) in a way that limited its operation to cases falling within sub‑section (1). By giving full effect to the opening words of sub‑section (1) of section 10, those words can be understood to mean that sub‑section (1) is subordinate to sub‑section (2). Such an interpretation does not damage the language of sub‑section (1) nor diminish its meaning.
The Court then turned to sub‑section (3) of section 10 and observed that if sub‑section (2) were given a restricted meaning, sub‑section (3) would also have to be given a restricted meaning and confined only to situations where a mark is already on the register. The Court found this to be an untenable construction because sub‑section (3) envisions applications by different proprietors for registration of trade marks that are identical or nearly resemble each other with respect to the same goods or description of goods. The competition contemplated by sub‑section (3) is among proprietors whose marks are not already on the register, and the provision contains no reference to a proprietor whose mark is already entered. Since sub‑section (3) cannot be limited to cases falling within sub‑section (1), the Court concluded that there is an additional reason why sub‑section (2) likewise cannot be confined to a narrow class of cases.
The Court observed that sub‑section (2) of section 10 could not be confined to a narrow construction. It explained that imposing such a limitation would produce an absurd result in which an unregistered mark would receive greater protection than a mark already entered on the register. Consequently, the Court said that circumstances such as honest concurrent use or other special situations could never provide a basis for obtaining registration of a mark identical or similar to an existing one unless a mark identical or similar was already entered on the register. The Court described this outcome as an extraordinary and untenable situation. The Court then recalled that the appellant’s mark had been entered on the register on 11 July 1951. It added that, if the argument advanced by Mr Pathak were accepted, the very next day after that entry the respondent would have been entitled to apply for registration of its own mark and the Deputy Registrar would have possessed the authority to register it under sub‑section (2) of section 10, an authority that did not exist before the appellant’s mark was entered. The Court rejected the notion that the legislature intended to create such a ludicrous scenario. In its view, the provisions of sub‑section (2) of section 10 function as an exception to the general prohibitory provisions of the Trade Marks Act, and those prohibitions are set out in sections 8(a) and 10(1). The Court then referred to the decision in Bass v Nicholson, which held that a trade mark is not automatically entitled to protection where its use might deceive or cause confusion, and therefore section 11 does not override section 12(2) of the English Act. The Court further quoted the eighth edition of Kerly on Trade Marks, stating that it is incorrect to consider section II in isolation from the other sections of the Act, because the general prohibition in section 11 does not apply to cases where the tribunal elects to exercise the discretion conferred by section 12(2). The Court supported this statement by citing the judgment in Spillers Ltd’s Application, which was reported in 1932 at 49 R.P.C. 88 and again in 1952 at 69 R.P.C. 327.
In the Spillers case, the appellants contended before the High Court that the Assistant Comptroller, having concluded under section 11 that confusion was likely, could not then invoke any discretion under section 12(2). The Court noted that Danckwerts J., who presided over the matter, observed that this contention required an examination of the relationship between sections 11 and 12. He explained that, for this purpose, the decisions concerning the earlier provisions—sections 11, 19 and 21 of the Trade Marks Act 1905—were of paramount importance. Danckwerts J. then considered those earlier decisions and made further observations, emphasizing that where section 12(1) applies, the first step is to determine whether the discretion under section 12(2) should be exercised to permit registration of the mark, and if the answer is affirmative, the registration may proceed notwithstanding the general prohibition in section 11.
In the passage cited at page 337, the Court recorded that the reasoning adopted by the House of Lords in the earlier cases concerning sections II, 19 and 21 of the 1905 Act should also be applied to sections 11 and 12 of the 1938 Act, leading to the conclusion that whenever the Court of Registrar chooses to exercise the discretion provided by section 12(2), such cases do not fall within the general prohibition contained in section II. Although that earlier case was governed by section 12(1) of the English Act, the learned judge’s remarks and his further observations supported the legal statement made by Kerly on trade marks. The judge explained that, in matters falling within section 12(1), it was logical first to examine whether the discretion conferred by section 12(2) ought to be exercised so that the mark may be registered. If the answer was affirmative, the judge held that there was no need to consider section 11 separately, because any reasons other than similarity to an existing mark that might deprive the proposed mark of protection would inevitably influence the exercise of the discretion under section 12(2). He further stated that the provisions of the Act could not be treated as independent compartments, and that where there was any likelihood of confusion, it would be inappropriate to interfere with the Assistant Comptroller’s discretion under section 12(2). The matter proceeded to the House of Lords, but the unsuccessful party did not challenge the learned judge’s view on the applicability of section 12(2) even to cases under section II, and the House of Lords offered no opinion that would cast doubt on that view. Subsequently, Halsbury’s Laws of England, volume 38, page 543, affirmed that section 11 does not override the statutory effect of honest concurrent use and that an objection under that section may be disposed of if evidence shows the mark has been honestly used without resulting confusion. To support this statement, reliance was placed on the decisions in Bass v Nicholson & Sons Ltd., Alexander Pierie & Sons Ltd.’s application, and Be Kidax (Shirts) Ltd.’s application, all of which directly relate to the provisions under consideration and reinforce the approach adopted by the Court.
The Registrar was found to have correctly concluded that the respondent was making honest concurrent use of the trade mark. In the High Court, counsel for the appellant, identified as Mr S Chaudhari, acknowledged that the respondent’s use was honest but argued that the use did not satisfy the meaning of concurrent use under section 10(2) of the Trade Marks Act. The basis of his argument focused on the volume of the respondent’s use. Counsel for the appellant, Mr Pathak, limited his submissions to the same issue of volume. The respondent introduced evidence to establish the extent of its use of the mark in India, and the Deputy Registrar accepted that evidence. A principal piece of evidence was an affidavit sworn by Florence S Goodwin, President of Durex Products Inc., in which she stated, “Your deponent knows that Durex Products Incorporated has done a substantial business in India since 1930.” Justice P B Mukherji, who sat on the bench hearing the matter, described that statement as “dependable evidence on which he was prepared to rely and act.” He also accepted other affidavits filed in the case and the opinion of the Deputy Registrar. Justice Mukherji then observed that the question of volume of use is always relevant when assessing “honest concurrent use” under section 10(2) and that the relevance depends on the facts of each case. He noted that the statute does not expressly require the use to be large or substantial. Relying on Kerly’s commentary at page 235 of the seventh edition of the Trade Marks treatise, he cited Lyle and Kinahan Ltd.’s application and other cases to support the proposition that the applicant’s trade need not be larger than that of the opponent. In his own view, the use must be a business or commercial use; a mere stray use would not suffice. He emphasized that no rigid rule can be laid down regarding the required volume of use under subsection (2) of section 10, and he illustrated this with the example of a small trader whose sales were modest in comparison with a large international trader dealing in similar goods bearing a similar mark. He concluded that even a small trader is entitled to trademark protection when honest concurrent use exists, because a trademark constitutes a form of property that warrants legal protection irrespective of its monetary value, provided it possesses some commercial significance. Both the public interest and the owner’s interest are relevant considerations of trademark legislation, and he agreed that in determining volume of use it is appropriate to consider the applicant’s marketing capacity and whether the use was commercial in nature.
In determining the volume of use, the Court held that it was necessary to examine both the applicant’s ability to market the goods and whether the use was of a commercial character or of another nature. The learned judge, Bachawat J., expressed satisfaction that the record, including the affidavit of Florence S. Goodwin, demonstrated that the use of the mark had been substantial. Counsel for the respondent argued that initially only samples of the contraceptive products were exported to India and that during the wartime years the sales were minimal. The Court acknowledged that samples had indeed been sent to India in 1928 as part of the introductory phase, but pointed out that the affidavit of Goodwin, relied upon by the High Court and the Deputy Registrar, clearly indicated that thereafter large quantities of contraceptives were exported to India. The Court noted that a temporary reduction in the volume of use might have occurred during the war because of a short‑term ban on imports of contraceptives from the dollar area, yet emphasized that even before that ban the respondent’s mark enjoyed a considerable presence in the Indian market. The Court reiterated that no rigid rule could be prescribed concerning the volume of use required under subsection (2) of section 10; ordinarily it was sufficient to demonstrate that the mark had been used commercially, a condition the Court found to be indisputable in the present case. Accordingly, the Court concurred with the findings of the High Court and the Deputy Registrar that the respondent had engaged in honest concurrent use of the mark for a substantial period, a fact that alone was enough to resolve the appeal, as it would have been before the High Court as well. While the High Court also examined an alternative ground for registration based on the existence of special circumstances, the Court referred to the detailed exposition of those circumstances in the judgment of Mukharji J. The first special circumstance highlighted was that “Durex” is the corporate name of the applicant, and a company is ordinarily entitled to employ its own name on its products unless compelling reasons exist to the contrary. The second circumstance was the long duration of use: the company was incorporated in January 1928 in New York, applied for registration of the “Durex” mark on 24 February 1930, and, according to Goodwin’s affidavit, had been using the mark on its products since March 1928. The Court observed that denying registration to such an established mark would cause hardship, and that this hardship constituted another factor that could be regarded as an “other special circumstance” under section 10(2) of the Act.
The Court observed that the third factor identified by the Deputy Registrar – the socioeconomic consideration of users of contraceptives – could be linked to the phrase ‘other circumstances’ in section 10(2) of the Act. The Deputy Registrar had taken into account the view that contraceptives are essential for the welfare of the nation in the Indian context. While the Court refrained from expressing a personal stance for or against the use of any contraceptive, it concluded that the Registrar had not erred in law by giving weight to those socioeconomic reasons as relevant under ‘other special circumstances.’ The Court further noted a fourth circumstance: the applicant’s mark is primarily used for contraceptives intended for women, and the appellant had admitted in a letter dated 27 October 1949 from Remfry and Son that the present application No 122251 of Durex Products Inc. concerned goods that were substantially different. The Court considered this admission to constitute a special circumstance. In the Court’s view, the first, second and fourth circumstances could be properly regarded as special circumstances that would justify registration, whereas the third circumstance was not. The Court explained that a special circumstance must be connected with the use of the mark, citing the authority in Kerly on Trade Marks (pages 164‑5) which interpreted ‘or other special circumstances’ to include any circumstance peculiar to the application, including prior use of the applicant’s mark before the conflicting mark was registered. Accordingly, the Court agreed with that interpretation and rejected the relevance of the third circumstance. The Court noted that the respondent had been alleged to have failed to discharge the burden of proving the absence of a reasonable probability of confusion, but held that such a burden does not arise where there is honest concurrent use. The Court referenced the High Court’s observation that the respondent’s burden was satisfied by the fact that no instance of confusion had occurred. Consequently, the Court found that the likelihood of confusion or deception was minimal because the respondent’s products were contraceptives for women that require medical assistance, whereas the appellant’s products were essentially male contraceptives. On this basis, the Court affirmed the High Court’s order, dismissed the appeal with costs, and recorded that the appeal was dismissed.