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(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented

(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or

(b) by virtue of law of copyright.

(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12. Explanation.—For the purposes of this section, earlier trade mark means—

(c) London Rubber Co. Ltd. v. Durex Products Incorporated & Anr.5:

“8. The provisions of Sections 8 and 10 of the Act are enabling provisions in the sense that it is not obligatory upon a proprietor of a mark to apply for its registration so as to be able to use it. But when a proprietor of a mark, in order to obtain the benefit of the provisions of the Trade Marks Act, such as a legally protected right to use it, applies for registration of his mark he must satisfy the Registrar that it does not offend against the provisions of Section 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. 542-43). 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 (Re Hack's Application [(1940) 58 RPC 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 (Re Arthur Fairest Ltd. Application [(1951) 68 RPC 197] ). Deception may result from the fact that there is some misrepresentation therein or because of its resemblance to a mark, whether registered or unregistered, or to a trade name in which a person other than the applicant had rights (Eno v. Dunn [(1890) 15 AC 252] ). Where the deception or confusion arises because of resemblance with a mark which is registered, objection to registration may come under Section 10(1) as well (See note ‘k’ at p. 543 of 38 Halsbury's Laws of England). The provisions in the English Trade Marks Act, 1938 (1 & 2 Geo. 6 clause 22) which correspond to Sections 8 and 10(1) to 10(3) of our Act are Sections 11 and 12(1) to 12(3). Dealing with the prohibition of registration of identical