London Rubber v. Durex Products: Honest Concurrent Use of DUREX

Citation & Court

London Rubber Co. Ltd. v. Durex Products Inc., Supreme Court of India (K. Subba Rao, J.R. Mudholkar and Raghubar Dayal JJ.), Civil Appeal No. 26 of 1961, decided 4 March 1963; AIR 1963 SC 1882; (1964) 2 SCR 211

The Dispute

Durex Products Inc. of New York applied in May 1946 to register DUREX for contraceptive devices and jellies. London Rubber, which claimed use of DUREX in India since 1932 and obtained its own registration in July 1951, opposed. The Deputy Registrar allowed registration under section 10(2) of the Trade Marks Act, 1940, finding honest concurrent use since 1928 and other special circumstances, and the Calcutta High Court dismissed the appeal. London Rubber argued that identical marks had to be refused under section 8(a), that section 10(2) could not override it, and that the American company's volume of use was too small.

What the Court Held

• Section 10(2) (honest concurrent use or other special circumstances) is an exception to both section 8(a) and section 10(1), and applies even if no conflicting mark was on the register when the application was filed.
• No fixed volume of use is required; ordinarily genuine commercial use is enough, a stray use is not, and the applicant's capacity to market its goods is relevant.
• Special circumstances must be connected with the use of the mark: the mark being the company's own name, use since 1928 and the different nature of the goods qualified, but the social benefit of contraceptives did not.
• Once honest concurrent use is shown, the burden of disproving likely confusion does not arise; in any case no instance of confusion had occurred, and confusion was hardly likely because the applicant's goods were for women and needed medical assistance.

How to Use This in Your Reply

Applicants whose mark is refused because of an earlier identical or similar mark can rely on it in a show-cause hearing or written reply to seek registration under section 12 of the 1999 Act. Build the evidence the Court valued: honest adoption, long and genuine commercial use (invoices, sales figures), the absence of any confusion during side-by-side use, and differences in goods or customers that conditions or limitations can secure. It also supports the argument that modest but real sales, judged against the applicant's capacity, can count as concurrent use.

Important Limit

Decided under sections 8(a) and 10(2) of the Trade Marks Act, 1940; the provision is now section 12 of the 1999 Act. Honest use was conceded here, so the case offers little where adoption looks copied. Concurrent registration does not let either owner sue the other on registration alone (section 28(3)), and passing-off claims remain open.

Judgment Source

Read the judgment. For other cases on the same issue, see trademark case laws in India, by issue.