Patents, Designs and Trademarks: Acts of negligence on the part of the Controller General are unpardonable: Delhi High Court

Patents, Designs and Trademarks: Acts of negligence on the part of the Controller General are unpardonable: Delhi High Court

The Delhi High Court in a recent matter observed that if 'ease of doing business in India' has to be truly achieved, acts of negligence on the part of the Controller General are unpardonable.

Justice Navin Chawla made the observation while setting aside two orders of the Controller General abating the opposition raised to the international registration of two marks.

The Controller General, in his order had said that due to certain technical and administrative reasons, no provisional refusal could be sent to the International Bureau World Intellectual Property Organisation (WIPO) within the period of 18 months from the date of notification of the international registration. In such circumstances, the mark under international registration is deemed protected.

On this, Justice Chawla said that he can only hope that the present two cases are the only aberrations and that such failure of the Office of the Registrar of Trade Marks would not only cause inconvenience and prejudice to the parties, but would also present India in bad light to the world.

In the present matter, the court was considering two petitions filed by pharmaceutical company Allergan and tyre manufacturer Bridgestone - challenging orders of the Controller General. The parties argued that they had filed opposition to registration of two marks as published in the Trade Marks Journal of December 2016 and February 2017.

As per provisions of the Trade Marks Act, 1999 (Act) when international registration has been opposed, the Registrar of Trade Marks has to notify the International Bureau of WIPO of its acceptance of extension of protection of the trade mark under such international registration, within a period of eighteen months of receipt of the advice from the Bureau. In case the Registrar of Trade Marks fails to notify the International Bureau of such acceptance, it shall be deemed that the protection has been extended to the trade mark.

In the present cases, even though the oppositions were filed on time and evidence in their support was also submitted, the Controller General passed suo motu orders citing administrative and technical reasons for its failure to communicate these oppositions to the WIPO.

This failure resulted in the marks being deemed protected in India as well.

The Court held that 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 orders passed by the Controller General.

"From the reading of the impugned order(s)/email(s) it is apparent that the Respondent no. 1 [Controller General] has issued the same applying the Madrid Protocol strictly and without appreciating the difference between the provisions of the Madrid Protocol and the Act. The impugned order(s)/email(s), therefore, cannot be sustained."

The order was thus set aside and the Court restored the oppositions back to their original numbers. The protection extended to the marks has also been directed to remain suspended till the time the oppositions are decided.

The Court has also directed a copy of the order to be forwarded to the Secretary, Ministry of Commerce and Industry, "for issuing necessary instructions/directions to ensure that such aberrations do not occur in future as they would only bring ridicule to the Indian system and denude the faith of foreign investors and stakeholders in India's capabilities".