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IN THE HIGH COURT OF DELHI
Navin Chawla, J.
Allergan Inc - Appellant
Versus
Controller General of Patents Designs and Trade Marks - Respondent
W.P.(C)-IPD 55 of 2021 & CM 37157 of 2019 and W.P.(C)-IPD 76 of 2021 & CMs 17414 of 2019, 23630 of 2019
Decided On : 12-10-2022
Trade Marks Act - Interpretation of Section 36E(5) - Summary of Acts and Sections: Section 36E of the Trade Marks Act, 1999 - The court analyzed the interpretation of Section 36E(5) of the Trade Marks Act, which deals with the extension of protection of a trade mark under international registration. The court highlighted the key legal provisions and their interpretations, emphasizing that the deeming provision under Section 36E(5) is applicable only when the protection of an international registration has not been opposed and the time for notice of opposition has expired. The court also discussed the differences between the language used in the Act and the provisions of the Madrid Protocol, emphasizing that the Act must be interpreted based on its own plain language.
Fact of the Case:
The court considered two Writ Petitions challenging orders issued by the Controller General of Patents, Designs and Trade Marks. The orders deemed the protection of international registrations of trade marks, despite oppositions being filed within the prescribed timelines. The court analyzed the factual background of the cases, including the opposition proceedings and the impugned orders issued by the Respondent No. 1.
Finding of the Court:
The court found that the impugned orders were issued in violation of the principles of natural justice and without due consideration, affecting the substantive rights of the petitioners. The court held that the deeming provision under Section 36E(5) of the Act is applicable only when no opposition has been filed within the prescribed time, and the Registrar of Trade Marks fails to communicate its acceptance of the application to the International Bureau. The court also emphasized that the impugned orders were issued strictly applying the Madrid Protocol, without appreciating the differences between the provisions of the Protocol and the Act.
Issues: The issues involved in the case included the interpretation of Section 36E(5) of the Trade Marks Act, the applicability of the Madrid Protocol, and the violation of principles of natural justice by the Respondent No. 1 in issuing the impugned orders.
Ratio Decidendi: The court's decision was based on the interpretation of Section 36E(5) of the Act, the differences between the Act and the Madrid Protocol, and the principles of natural justice. The court held that the impugned orders were unsustainable and set them aside, restoring the oppositions to their original numbers and suspending the protection extended to the trade marks of the respective Respondent No. 2 until the decision of the oppositions.
Final Decision: The court set aside the impugned orders, restored the oppositions to their original numbers, and suspended the protection extended to the trade marks of the respective Respondent No. 2 until the decision of the oppositions. The court also emphasized the need for the Ministry of Commerce and Industry to issue necessary instructions to prevent such aberrations in the future.
JUDGMENT
1. The present Writ Petitions under Articles 226 and 227 of the Constitution of India are filed by the respective petitioners impugning the orders dated 11.01.2019 [in WP(C)-IPD 76/2021] and 15.05.2019 [in WP(C)-IPD 55/2021] issued by the Controller General of Patents, Designs and Trade Marks (hereinafter referred to as the `Respondent No.1').
2. The Writ Petitions are being disposed of together as they raise a common issue of interpretation of Sub-section 5 of Section 36E of the Trade Marks Act, 1999 (in short `the Act'), being:
"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?"
3. The factual background in which the above issue arises, is stated herein under.
FACTUAL BACKGROUND OF WP(C)-IPD 55/2021
4. The Respondent No. 2, that is, Dermavita Limited, applied for a multi-class trade mark, vide application No. IRDI-3243237, for the mark "JUVEDERM" in Classes 3, 35 and 44, on 17.06.2015. The same was published in the Trade Marks Journal No. 1774 dated 05.12.2016 at page No. 7370, which was made available to the public on the same day. The trade mark application was open for an opposition period under the provisions of the Act upto 05.04.2017.
5. The Petitioners, Allergan Inc. and Allergan Holdings France (hereinafter referred to as `the Petitioner No. 1') through their counsel, filed the Notices of Opposition to the application of the Respondent No. 2 on 04.04.2017. Thereafter, the Counter-Statements were filed by the Respondent No. 2 on 20.02.2018. The Petitioner No. 1 filed their Evidences in Support of Opposition on 22.06.2018, while the Respondent No. 2 filed their Evidences in Support of the Application on 27.08.2018. The Petitioner No. 1 filed their Evidences in Reply on 28.09.2018. With that, the pleadings in the opposition proceedings were completed and only the final hearing of the same remained.
6. However, the Respondent No. 1 passed a suo motu order dated 15.05.2019, treating the oppositions filed by the Petitioner No. 1 as abated. The reason given was as under:
"Due to certain technical and administrative reasons no Provisional Refusal could be sent to WIPO within the period of 18 months from the date of notification of the international registration. In such circumstances the mark under the international registration is deemed protected and the present opposition will therefore abate"
7. On the same day, the Respondent No. 1 issued the following email to the Petitioner No. 1:
"With reference to your above mentioned opposition filed pursuant to publication of the international registration and IRDI as mentioned above, I am directed to inform as under-
By the time the opposition was communicated to the International Bureau of WIPO in the form of Provisional Refusal based on opposition, the international registration was protected in terms of Article 4(1) (a) of the Madrid Protocol and Section 36F of the Trade Marks Act 1999. In these circumstances, the above mentioned opposition cannot be entertained and opposition proceedings cannot be initiated.
However, in order to protect interest of the opponent, the Registrar of Trademarks proposes to convert the above mentioned opposition into the application for cancellation of protection of the mark in India which would be processed in the manner similar to a Rectification application made under Section 57(1) of the Trade Marks Act 1999. This application would be taken to have been filed on the date of receipt of the above mentioned opposition.
In view of above, you should, submit the application for cancellation of protection of the mark under the above mentioned international registration along with statement of case, so that t
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