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Inaction By Registrar Of Trademark Is Unpardonable If It Hampers The “Ease Of Doing Business In India”: Delhi High Court

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Introduction

The Controller General of Patents Designs & Trade Marks is the chief official responsible for facilitating the patent system in India. The controller general is vested with extensive powers as well as a fundamental duty to administer the patent process with proper diligence and ensure the protection of innovation along with the rights of the patentee. In light of this we would be discussing the following case:

Bridgestone Corporation Vs. Controller General Of Patents [W.P.(C)-IPD 76/2021 & CMs 17414/2019, 23630/2019]

The Hon’ble Delhi High Court, in Bridgestone Corporation vs Controller General of Patents, iterated that any negligence on the part of the registrar to perform this duty should be unpardonable at all costs specially to facilitate ease of doing business. It was strictly observed by the Hon’ble court that necessary directions need to be in place to ensure that such anomalies in the system should not occur in future which could potentially harm the reputation of the Indian Patent System or frustrate the faith of the foreign investors in India’s capabilities. This case is notable as section 36E of the Trademarks act 1999 regarding the international applications where India has been designated, was interpreted and the court also made observations on the viability of oppositions made under the Madrid Protocol, against the international applications falling under this section.

The factual matrix of this case revolved around two writ petitions that were filed by the Japanese multinational Bridgestone Corporation and the American Company Allergen Inc. (hereinafter the “Petitioners”) against the identical orders passed by the Controller General of Patents Designs and Trademarks (hereinafter the “Registrar”) with regards to the international applications of the petitioners for seeking registration of particular marks (‘AMBERSTONE’ which was opposed by Bridgestone)  and (‘JUVEDERM’ which was opposed by Allergen) under the Madrid Protocol (Article 5). These orders were “deemed abated ” by the Registrar due to the failure to communicate the opposition to the International Bureau of WIPO within the stipulated period of 18 months, on account of a technical glitch in the software of the Trademark office.

Observations of the Hon’ble Delhi High Court

  • There is no ambiguity in the wording of Section 36E of the trademark act, 1999. The act was adopted to give effect to the provisions of the Madrid Protocol. Thus, The International applications in the present case were to be adjudicated strictly by the provisions of the Act and not based on the Madrid Protocol. The impugned orders were passed by applying the Madrid Protocol strictly and without appreciating the difference between the provisions of the Madrid Protocol and the Act.
  • A simple reading of Section 36E(5) of the Trademarks Act, 1999 reveals that it is only applicable when there has been no opposition filed against an international application and the deadline for filing such a notice of opposition has passed. This is because the provision in Subsection 5 of Section 36E of the Act does not apply when an international application seeking registration in India has received opposition.
  • That the Indian Trademarks Act change adopted in response to India joining the Madrid Protocol is not strictly compliant with the Protocol. In contrast to the Madrid Protocol, where the failure to convey “acceptance” within the required time frame results in the deemed extension of protection to the Trade Mark, under Section 36E(5) of the Act, it is the failure to convey “refusal” that results in the deemed extension of protection to the Trade Mark.

Conclusion

As a result, the Hon’ble Judge overturned the Respondent’s orders and reinstated the Petitioners’ oppositions. The Hon’ble Judge additionally ordered that protection for applications for foreign trademarks be suspended until the outcome of petitioners’ oppositions. Justice Navin Chawla further opined that to achieve ‘Ease of doing business in India’, it is essential that such negligence does not take place on the part of the Respondent. In furtherance to the grave nature of the matter, the Court also forwarded a copy of the order to the Ministry of Commerce and Industry to issue proper instructions/ directions to ensure that such irregularities do not take place and protect the interests of foreign stakeholders against the inaction or negligence by the officials.