1. Dispute over registration of an identical trademark for contraceptives — Opposition based on prior use and registration — Application of Sections 8(a) and 10 of Trade Marks Act, 1940. (Para 1 , 2 )
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1963 Supreme(SC) 62
SUPREME COURT OF INDIA
4th March, 1963
K. SUBBA RAO, RAGHUBAR DAYAL AND J.R. MUDHOLKAR, JJ.
London-Rubber Co., Ltd., Appellant
Versus
Durex Products Incorporated and another, Respondents.
Civil Appeal No. 26 of 1961.
Advocates appeared
M/s. G. S. Pathak and B. Sen, Senior Advocates, (Mr. D. N. Mukherjee, Advocate, with them), for Appellant; Mr. H. N. Sanyal, Additional Solicitor General of India (Mrs. A. N. Sinha and B. N. Ghosh, Advocates, with him), for Respondent. No. 1.
Advocates:
A.N.SINHA, B.N.GHOSH, B.SEN, D.N.MUKHERJI, G.S.PATHAK, H.N.SANYAL
A.N.SINHA, B.N.GHOSH, B.SEN, D.N.MUKHERJI, G.S.PATHAK, H.N.SANYAL
Section 10(2) of the Trade Marks Act, 1940, provides an exception to both Section 8(a) and Section 10(1), allowing the registration of identical or similar marks based on honest concurrent use or special circumstances, regardless of whether a competing mark is already registered.
Headnote:(A) Trade Marks Act, 1940 - Sections 8(a) and 10(1), (2), (3) - Registration of identical trade marks - Honest concurrent use - Special circumstances - The prohibition against registering marks likely to deceive or cause confusion under Section 8(a) does not override the discretion of the Registrar under Section 10(2) to permit registration in cases of honest concurrent use or other special circumstances (Paras 7, 12, 16). Section 10(2) is an exception to the prohibitory provisions of both Section 8(a) and Section 10(1) and is not merely a proviso to Section 10(1) (Paras 15, 16).
(B) Section 10(2) - Scope - The provision permits simultaneous registration of identical or similar marks irrespective of whether an identical or similar mark is already on the register (Para 12). Restricting its application only to cases where a mark is already registered would lead to an absurd situation where unregistered marks receive higher protection than registered ones (Para 15).
(C) Honest Concurrent Use - Volume of use - For the purpose of Section 10(2), it is not necessary for the applicant's trade to be larger than that of the opponent; it is sufficient to show that there was commercial use of the mark (Paras 19, 20).
(D) Special Circumstances - Circumstances peculiar to the application in relation to the subject-matter, such as the mark being the name of the company, long duration of use, and differences in the specific nature of the goods, can be regarded as special circumstances (Paras 21, 22). Socio-economic considerations not connected with the use of the mark do not constitute special circumstances (Para 22).
Facts of the case:
An application for registration of a trade mark for contraceptives was opposed by another party claiming prior use and registration of the identical mark. The Registrar admitted the mark to registration based on honest concurrent use and special circumstances. The High Court dismissed the appeal against this order.
Findings of Court:
The court found that the respondent had established honest commercial use of the mark for a considerable period. Additionally, the fact that the mark was the company's own name, the long duration of use, and the difference in the target consumer base (women's vs. men's contraceptives) constituted special circumstances justifying registration.
Issues: Whether the Registrar's power to permit registration based on honest concurrent use or special circumstances under Section 10(2) is limited only to cases where a mark is already on the register under Section 10(1), or if it also applies to cases falling under the general prohibition of Section 8(a).
Ratio Decidendi: Section 10(2) is an independent exception to the prohibitory provisions of the Act, including Section 8(a). It allows the Registrar to exercise judicial discretion to register identical or similar marks if honest concurrent use or special circumstances exist, regardless of whether the competing mark is already registered.
Result: Appeal dismissed.
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2. Whether registration under Section 10(2) is limited to cases where a mark is already registered or if it can override the prohibition against deception under Section 8(a). (Para 3 , 6 , 11 , 13 )
3. Section 10(2) acts as an exception to both Section 8(a) and 10(1) — Honest concurrent use requires commercial use — Special circumstances must relate to the mark's use. (Para 5 , 7 , 8 , 12 , 14 , 15 , 16 , 17 , 18 , 19 , 20 , 21 , 22 , 23 )
4. Section 10(2) of the Trade Marks Act, 1940, permits registration of identical marks based on honest concurrent use or special circumstances, overriding prohibitions in Section 8(a) and 10(1). (Para 15 , 16 )
5. Appeal dismissed — Order of the High Court upholding the registration of the trademark affirmed. (Para 23 )
6. Does the prohibition of registration of marks likely to deceive under Section 8(a) override the Registrar's discretion under Section 10(2)?
No. Section 10(2) is an exception to the prohibitory provisions of the Act, including Section 8(a). If honest concurrent use or other special circumstances exist, the Registrar may permit registration even if the mark is identical or likely to cause confusion. (Para 15 , 16 , 18 )
7. What constitutes honest concurrent use for the purpose of registering a trademark under Section 10(2)?
Honest concurrent use requires that the mark be used in a commercial or business capacity. It is not necessary for the applicant's volume of trade to be larger than that of the opponent to qualify for protection. (Para 19 , 20 )
8. What qualifies as other special circumstances under Section 10(2) of the Trade Marks Act, 1940?
Special circumstances include factors peculiar to the application in relation to the subject-matter, such as the mark being the company's own name, long-term use, or differences in the target market of the goods. (Para 21 , 22 )
9. Can socio-economic benefits of a product be considered special circumstances for trademark registration?
No. A special circumstance must be connected with the use of the mark itself. General socio-economic considerations regarding the necessity of a product for national welfare are not relevant to the use of the trademark. (Para 21 , 22 )
Judgement
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 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.
2. 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 diaphraghms, instruments for inserting diaphraghms 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 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, 1940 which was dismissed by a Division Bench of the Court on March 9, 1959. After obtaining a certificate of fitness from the High Court the appellant has come up before us.
3. On behalf of the appellant the main contention urged by Mr. Pathak is that as the remarks 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 S. 10 (2) of the Act inasmuch as the provisions of S.8 (a) are not subject to those provisions. Further, according to him, the requirements of S. 10 (1) were not satisfied in this case.
4. 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) by reason of its being likely to deceive or to cause confusions or otherwise, be disentitled to protection in a Court of justice; or
(b) be likely to hurt the religious susceptibilities of nay class of the citizens of India; or
(c) be contrary to any law for the time being in force, or to morality".
5. On the face of it, this is a general provision which prohibits registration of certain kinds of trade marks as indeed would appear from the heading 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 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.
6. The Depu
