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HIGH COURT OF CALCUTTA
P. B. Mukharji, B. S. Bachawat
LONDON RUBBER CO. LTD. - Appellant
Versus
DUREX PRODUCTS (INCORPORATED) - Respondent
A. F. O. O. 41 Of 1955
Decided On : JULY 10, 1958
TRADE MARK - [KEYWORD] - [SUBJECT] - [ACT SECTION LIST] - [SUMMARY]
Fact of the Case:
The appellants, London Rubber Company Limited, opposed the application of "durex Products Inc." for registration of the Trade Mark "durex" in Class X. The dispute relates to the well-known Durex contraceptives.
Finding of the Court:
The Court held that the mark applied for by the applicants, namely, "durex" was identical with their mark "durex". The Court further held that the mark was not likely to deceive or cause confusion and that the applicants were entitled to protection under Sub-section (2) of Section 10 of the Trade Marks Act, 1940.
Issues: Whether the mark applied for by the applicants was identical with the appellants' mark "durex". Whether the mark was likely to deceive or cause confusion. Whether the applicants were entitled to protection under Sub-section (2) of Section 10 of the Trade Marks Act, 1940.
Ratio Decidendi: The Court held that the mark applied for by the applicants was identical with the appellants' mark "durex". The Court further held that the mark was not likely to deceive or cause confusion and that the applicants were entitled to protection under Sub-section (2) of Section 10 of the Trade Marks Act, 1940. The Court reasoned that: * The general provisions of Section 8 (a) of the Trade Marks Act do not override the special protection afforded by Section 10 (2) in respect of identical or resembling trade marks. * Sub-section (2) of Section 10 permits registration of an identical or resembling trade mark though that mark does not offend against the provisions of Sub-section (1) of Section 10 and though the other mark is not on the register. * In this particular case, the discretion under Sub-section (2) of Section 10 should be exercised in favour of the applicants for the following reasons: * The applicants have honestly and independently coined, invented and adopted the mark "durex" and have honestly and independently applied that mark to their own goods. * The word "durex" forms an essential part of the applicants' name. * The user of the mark by the applicants has been for a considerable length of time and in any event since 1932. * In spite of the user of the mark for this lengthy period there has been not a single instance of confusion or deception. * There will be considerable hardship to the applicants if registration of their mark is not permitted remembering that the word "durex" is part of their name. * Regard being had to the admission made by the applicants in their attorneys' letter dated 6-11-1947 that the present application is in respect of very different goods and to the further fact that it is necessary to consult a doctor before using the goods in respect of which the applicant's mark has been registered the possibility of any deception or confusion is negligible. * The limitations and conditions imposed by the Registrar obviate any tangible possibility of confusion of the public in future.
Final Decision: The Court dismissed the appeal.
( 1 ) THIS is a trade mark appeal under Section 76 of the Trade Marks Act, 1940, from the decision of Sri Nagaraja Sastri, Deputy Registrar, Trade Marks. It relates to the well-known Durex contraceptives.
( 2 ) THE appellants are the London Rubber Company Limited who opposed the application of "durex Products (Inc.) for registration of the Trade Mark "durex" in Class X. Durex Products (Inc.) are one of the respondents in this appeal. The other respondent is the Registrar of Trade Marks.
( 3 ) THIS Court in this appeal did not have the advantage of the appearance of any one of these two respondents. This disadvantage has, however, to a considerable extent been offset by a sensible, comprehensive and well-reasoned judgment of the Deputy Registrar of Trade Marks.
( 4 ) THE dispute relates to the mark "durex" applied to contraceptives. The material portion of the decision from which this appeal is preferred is set out below ;"having considered al! the above aspects, I think, as the marks are admittedly identical, an imposition of the condition that the Applicant's use of the name "durex Products Inc. ", on the packings and containers of the goods, will safeguard the public further from tangible possibility of confusion between the marks. Hence my order is that the application do proceed to registration subject to the limitations that: (1) the designation of goods shall read "vaginal diaphragms, instruments for inserting vaginal diaphragms and models for demonstrating insertion of vaginal diaphragms and applicators for vaginal jellies" and (2) the name "durex Products Inc. ", shall appear on the packings and containers of the goods. "
( 5 ) THE appellants London Rubber Company Limited have appealed from that decision. They object to the application of the "durex Products Inc. " for registration of the trade mark in class X, Class X of the 4th Schedule of the Trade Mark Rules, 1942, made under the Trade Marks Act, 1940, reads as follows : "surgical, medical, dental and veterinary instruments and apparatus (including artificial limbs, eyes and teeth.)". I should have thought that these contraceptives over which the present dispute arises were neither surgical nor dental nor veterinary instruments nor apparatus but I am told that by a certain stretch and strain on the word "medical" they may perhaps be brought thereunder although I am greatly puzzled how they are medical. Nothing, however, turns on the classification so far as this appeal is concerned and I shall say nothing more.
( 6 ) THE facts of this trade mark dispute should be clearly stated. The London Rubber Company Ltd. is the trading name of Elarco Limited of London. They entered opposition on 29-3-1951 to the application No. 122251 of the "durex Products Inc. " of New York City. That application was made as early as 28-5-1946 in respect of "contraceptive devices, including prophylactic sheaths or condrums, vaginal diaphragms, instruments for inserting diaphragms and models for demonstrating insertion of diaphragms, vaginal jellies, applicators for vaginal jellies and surgical lubricating jellies. " The applicants wanted to register the mark "durex". The appellants who were opponents before the Registrar disputed the claim of the applicants. The appellants' case was that they were well-established manufacturers of surgical rubber goods and proprietors in India of the trade mark "durex" and that they had been using this trade mark in India since 1932. They also pleaded an Indian Declaration of this mark recorded in India on 4-10-1934 and the fact that it was also registered in the United Kingdom on 17-10-1932. It was the case of the appellants that they applied for registration on 23-12-1946 in respect of the word "durex" in Class X. The substance of the complaint of the appellants was that the mark applied for by the applicants, namely, "durex" was identical with their mark "durex".
( 7 ) THIS account of facts may be enlarged by a few dates relevant
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