TMI Blog1963 (3) TMI 84X X X X Extracts X X X X X X X X Extracts X X X X ..... nt 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. 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, 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. 3. On behalf of the appellant the main contention u ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Save as provided in sub-section (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or which so nearly resembles such trade mark as to be likely to deceive or cause confusion. (2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. (3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court. 7. On the face of it, sub-s. (2) permits the Registrar or Deputy Registrar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the Trade Marks Act, such as a legally protected rights to use it, applies for registration of his mark he must satisfy the Registrar that it does not offence against the provisions of s. 8 of the Act. The burden is on him to do so. Confining ourselves to clause (a) the question which the Registrar has to decide is, whether having regard to the reputation acquired by use of a mark or a name, the mark at the date of the application for registration 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 amongst a substantial number of persons [See 38 Halsbury's Laws of England, pp. 542, 543.]. What he decides is a question of fact but having decided it in favour of the applicant, he has a discretion to register it or not to do so vide Re Hack's Application (1940) 58 R.P.C. 91.. But the discretion is judicial and for exercising it against the applicant there must be some positive objection to registration, usually arising out of an illegality inherent in the mark as applied for at the date of application for registration, vide Re Arthur Fairest Ltd's a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... utation for it by use, section 12(1) is more effective in securing refusal of an application than section 11, e.g., Huxley's application (1924) 41 R.P.C. 123. The criterion which decides whether the Registrar should make the comparison of an applicant's mark with an opponent's mark under section 11 or under section 12(1) is whether he is considering the proved use of the opponent's mark. Prima facie, however, the scope for possible confusion under section 12 is wider than the scope for confusion under section 11. 12. In the case before us the Deputy Registrar has permitted the registration of the respondent's mark though it is identical with that of the appellant's and though the appellant's mark was not registered at the date of the respondent's application upon the ground of honest concurrent use of the mark by the respondent from the year 1928 and also on the ground that there are other special circumstances. 13. Mr. Pathak has challenged the finding about concurrent use and also the finding that there are special circumstances justifying the registration of the respondent's mark. We shall deal with the arguments advanced by him ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e this Court was considering the proviso to Art. 286(2) of the Constitution and the Court held that a proviso was meant only to lift the ban under Art. 286(2) and nothing more. Bhagwati J., who delivered the judgment of the Court has observed thus : It is a cardinal rule of interpretation that a proviso to a particular provision of a statute only embraces the field which is covered by the main provision. It carves out an exception to the main provision to which it has been enacted as a proviso and to no other. 17. These observations, however, must be limited in their application to a case of a proviso properly so called and there is no justification for extending them to a case like the present where the legislature has, when it could well do so if that were its intention, not chosen to enact it as a proviso. The decision, therefore, affords no support to the contention. 18. The fact that sub-s. (2) is part of the same section as sub-s. (1) cannot justify the conclusion that it was enacted solely for the purpose of lifting the ban enacted by sub-s. (1). Its language is wide enough to embrace a mark which is already on the register as well as a mark which is not on the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r special circumstances would never be a ground for obtaining registration of an identical or similar mark unless there is on the register already a mark which is identical with or similar to the one mark which is sought to be registered. That would, indeed, create an extraordinary situation. As we have already stated, the appellant's mark was in fact registered on July 11, 1951 and if Mr. Pathak's argument is accepted the very next day after the registration of the appellant's mark it would have been open to the respondent to apply for registration of its mark and the Deputy Registrar would have had the jurisdiction to register it under sub-s. (2) of s. 10, though he lacked that jurisdiction prior to the registration of the appellant's mark. We cannot ascribe to the legislature an intention to create such a situation, a situation which can only be described as ludicrous. 19. In our opinion the provisions of sub-s. (2) of s. 10 are by way of an exception to the prohibitory provisions of the Trade Marks Act. Those provisions are contained in s. 8(a) and s. 10(1). It has been held in Bass v. Nicholson (1932) 49 R.P.C. 88., that a trade mark is not necessarily entit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... affect the exercise of the discretion conferred by section 12(2). It is not possible, as it seems to me, to apply the provisions of the Act as though they were in separate compartments. In the result, if there is any likelihood of confusion being caused, in my view it would not be right to interfere with the Assistant Comptroller's exercise of the discretion under s. 12(2) . 23. This case was carried right up to the House of Lords. But the view taken by the learned Judge as to the applicability of s. 12(2) even to cases under s. 11 was not challenged by the unsuccessful party nor has the House of Lords said anything which would throw doubt on the correctness of the view taken by the learned Judge on the point. 24. In Halsbury's Laws of England, Vol. 38, the legal position is stated thus at p. 543 : The foregoing provision (s. 11) does not override the statutory effect of honest concurrent use and an objection under the foregoing provision may be disposed of if there is evidence that the mark has been honestly used without confusion resulting. 25. In support of this statement reliance has been placed on Bass v. Nicholson Sons Ltd. (1932) 49 R.P.C. 88. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... trader who sold goods under a particular trade mark for a long time though his use or sales were small in comparison with big international traders dealing in similar goods bearing a similar trade mark and then observed : Even so, if there is honest concurrent use I should think the small trader is entitled to protection of his trade mark. Trade mark is a kind of property and is entitled to protection under the law, irrespective of its value in money so long as it has some business or commercial value. Not merely the interest of the public but also the interest of the owner are the subject and concern of trade mark legislation. 28. With respect, we agree with the learned Judge that in ascertaining the volume of the use it is relevant to consider the capacity of the applicant to market his goods and whether the use was commercial or of other kind. The other learned Judge, Bachawat J., observed : On the materials on the record I am satisfied that the use has been substantial as stated in the affidavit of Florence S. Goodwin. 29. It was contended by Mr. Pathak that originally only samples of the contraceptives were exported to India by the respondent and during th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cial circumstances' in section 10(2) of the Act. Thirdly, the socio-economic consideration of the user of these contraceptives also in my view relate to 'other circumstances' in section 10(2) of the Act. The Deputy Registrar in this case has taken into consideration the socio-economic view that contraceptives are necessary in the Indian context for the welfare of the nation. Without expressing my personal view either in favour or against the use of any contraceptive I cannot say that the Registrar was wrong in law in paying consideration to the socio-economic reasons for the use of the trade mark 'Durex' for contraceptives in the Indian Market as relevant under 'other special circumstances.' Fortunately the 'other special circumstances' is the fact that the applicants' mark is largely confined to contraceptives for use by women and the appellant' admission contained in the letter of 27 October, 1949 from Remfry and son that the present application No. 122251 of 'Durex Products Inc.' is for very different goods. That also in my view is a special circumstance in this case. 31. In our opinion the 1st, 2nd and the 4th circumstanc ..... X X X X Extracts X X X X X X X X Extracts X X X X
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