London Rubber Co. Ltd. v. Durex Products

A leading trademark case establishing the principle of honest concurrent use and the circumstances in which an identical trademark may be permitted to be registered.

Short Description About the Case

This case concerned the trademark “DUREX”. London Rubber Co. Ltd. opposed the registration of the same mark by Durex Products Inc., claiming prior use of DUREX in India. The Supreme Court examined whether an identical trademark could nevertheless be registered on the ground of honest concurrent use and special circumstances.

Facts

London Rubber Co. Ltd. claimed that it had been using the trademark “DUREX” in India since 1932 and had obtained registration of the mark.

Durex Products Inc., a company based in the United States, subsequently applied for registration of “DUREX” in India in relation to contraceptive devices and related products.

London Rubber Co. Ltd. opposed the application on the ground that the mark was identical to its registered trademark.

The Deputy Registrar nevertheless permitted registration, relying upon honest concurrent use and special circumstances. The matter ultimately reached the Supreme Court.

Findings

The Supreme Court examined Sections 8(a) and 10(2) of the Trade Marks Act, 1940, particularly the exception permitting registration in cases of honest concurrent use or other special circumstances.

The Court held that no rigid rule can be prescribed regarding the volume of use required to establish honest concurrent use. Ordinarily, commercial use of the mark may be sufficient, depending upon the facts of the case.

The Court also recognized that special circumstances must be connected with the use of the mark and that the circumstances of the particular case may justify registration despite the existence of an identical or similar mark.

In this case, the Court found that the circumstances justified registration and that there was hardly any likelihood of confusion or deception.

Suggestion

This case is highly useful in matters involving honest concurrent use, trademark registration, identical marks, prior use, likelihood of confusion and special circumstances.

It can be cited when a party seeks registration of a mark that is identical or similar to an existing mark and relies upon Section 12 of the Trade Marks Act, 1999 in support of honest concurrent use.

For practical legal use, this case supports the principle that honest concurrent use may justify registration even where identical or similar marks exist, provided the facts and circumstances establish sufficient grounds for such exceptional registration.

Judgment

The Supreme Court upheld the registration permitted by the Registrar.

The Court found that the circumstances of the case constituted sufficient special circumstances and that the honest concurrent use was established. It therefore concluded that there was hardly any likelihood of deception or confusion.