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