If 'Ease Of Doing Business' Is Truly To Be Achieved, Such Negligence Is Unpardonable: Delhi HC Pulls Up Controller General of Trademarks

The Delhi High Court has pulled up the Controller General of Patents, Designs and Trademarks for its failure to communicate the filing of opposition by two entities in respect of registration of international trademarks to the International Bureau of World Intellectual Property Organisation within the timeline stipulated under the Trademarks Act.

"I can only hope that the present two cases are the only aberrations in the working of the Madrid Protocol," said the court.

Justice Navin Chawla said such failure would not only cause inconvenience and prejudice to the parties, but would also present India as a Nation in bad light to the world.

"If the slogan of "Ease of doing business in India‟ is truly to be achieved, such act of negligence of the Respondent no. 1 (Controller General of Patents, Designs and Trademarks) is unpardonable," the court said.

The court directed that a copy of the order be forwarded to the Secretary of Ministry of Commerce and Industry, for issuing instructions or directions to ensure that such aberrations do not occur in future.

The court said such failure would "only bring ridicule to the Indian system" and denude the faith of foreign investors and stakeholders in India‟s capabilities.

Section 36E (5) of the Act provides that where the protection of an international registration has not been opposed and the time for notice of opposition has expired, the Registrar shall within a period of eighteen months of the receipt of advice under sub-section (1), notify the International Bureau its acceptance of extension of protection of the trade mark.

The provision adds that in case the Registrar fails to notify the International Bureau, it shall be deemed that the protection has been extended to the trade mark.

The court was dealing with two pleas raising a similar question as to "whether in terms of Section 36E (5) of the Act, failure of the Registrar of Trade Marks to notice its acceptance of extension of the trade marks under international registration where India has been designated to the International Bureau, it shall be deemed that the protection has been extended to the trade mark in spite of the same being opposed within the time for notice of opposition?"

The two petitioners, who had filed oppositions pursuant to publication of international registration of the trademarks, had challenged the order passed by the Controller General.

In the impugned orders, it was stated that provisional refusal of trademark registration could not be sent to WIPO within 18 months due to certain technical and administrative reasons from the date of notification of the international registration. Accordingly, it was stated that the trademark under the international registration would be deemed as protected.

It was submitted on behalf of the petitioners that they cannot be penalised for the fault on part of the Registrar of Trademarks since they had complied with the opposition procedure laid down in Section 21 of the Act.

On the other hand, the Registrar of Trademarks admitted before the court that due to a technical glitch in the functioning of a software module, the Provisional Refusal was not generated and could not be communicated to the WIPO.

It was argued that since the international registration was already protected in terms of Article 4 (1)(a) of the Madrid Protocol, the Trade Marks Office passed the impugned orders disposing oppositions as abated.

Perusing the provision in question, the court observed that since the Registrar of Trade Marks had failed to communicate the opposition to the International Bureau within the stipulated time, the petitioners cannot suffer a prejudice for the same.

"…if the deeming provision is to apply also in a case where, though an opposition has been filed to the international registration within the time prescribed, merely because the Registrar of Trade Marks has failed to communicate the filing of such opposition to the International Bureau, it would not only act as prejudicial to the opponent of such registration for no fault of his but would also act in favour of such applicant and against the general public, though there has been no decision on the opposition of such mark," the court said.

The court further observed that where the opposition stands filed within the time prescribed, the question of the Registrar of Trade Mark communicating its acceptance to the application without first deciding on the opposition filed, does not arise.

The court also noted that unlike the Madrid Protocol where the Trade Mark office of the Contracting State is to communicate its refusal to register the trademark to the International Bureau; in India, the Trade Mark Office of India is to communicate its acceptance to such International application.

"While in Madrid Protocol, it is failure to communicate „refusal‟ within the time prescribed, which shall result in deemed extension of protection to the Trade Mark, in Section 36E(5) of the Act, it is the failure to convey „acceptance‟ that leads to such deeming extension of protection," the court said.

It added "Since there is no ambiguity in the wordings of the provisions of the Act herein, recourse to the Madrid Protocol to interpret the provision of Section 36E(5) of the Act would not be permissible and cannot be resorted to. Why the legislature did not adopt the language of the Madrid Protocol in the Act, is not for this Court to guess. This Court is only to consider these petitions in light of the unambiguous provisions of the Act."

Setting aside the impugned orders, the court restored the oppositions back to their original numbers. "The International applications in the present case were to be dealt with strictly in accordance with provisions of the Act and not on the basis of the Madrid Protocol, as has been done in the impugned orders …," said the court.

The court added that the protection extended to the trade marks of the opposite entities based on their applications shall remain suspended till the decision of the oppositions.

Title: ALLERGAN INC AND ANR. v. CONTROLLER GENERAL OF PATENTS DESIGNS AND TRADE MARKS AND ANR.

Citation: 2022 LiveLaw (Del) 960

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