Case: London Rubber Co. Ltd Vs. Durex Products

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 byDurex 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 diaphragms, instruments for inserting diaphragms 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 manufacture 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 11, 1951. Thereafter, on July 24, 1954 the registration was renewed for a period of 15 years as from December 23, 1953. The respondent No. 1s application as well as the appellants 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, 1949 which was dismissed by a Division Bench of that Court on March 9, 1959. After obtaining a certificate of fitness from the High Court the appellant has come up before us.On behalf of the appellant the main contention urged by Mr. Pathak is that as the marks 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 him, in error in applying the provisions of 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(2) were not satisfied in this case.

Court's reasoning:
We agree with this view and, therefore, do not regard the third circumstance as relevant. Even so, the other three circumstances would be sufficient to justify the registration of thewas faintly argued that the respondent has not discharged the burden of establishing that there was no reasonable probability of confusion. This question cannot arise in a case of honest concurrent use. However, we may point out that the High Court, after observing that the burden was undoubtedly on the respondent to establish that there was no reasonable probability of confusion, has held that that burden is discharged by the eloquent fact that throughout there has not been a single instance of confusion. In our opinion there is hardly any likelihood of confusion or deception here because the respondents goods are confined to contraceptives for use by women which can only be used with medical assistance while the appellants contraceptives are essentially for men.