“Negligence of the Controller General is unpardonable if it affects the ‘Ease of Doing Business in India’: Delhi High Court”
Introduction
The Controller General Of Patents Designs & Trade Marks is chief official responsible for facilitating the patent system in India. The controller general or the registrar, is vested with extensive powers as well as a fundamental duty to administer the patent process with proper diligence and ensure the protection of the innovation along with the rights of the patentee. In light of this, The Hon’ble Delhi High Court, in Bridgestone Corporation vs Controller General of Patents,[i] iterated that any negligence on the part the registrar to perform this duty should be unpardonable at all costs especially 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 capabailties. This case is notable as the 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.
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Analysis Of The Case
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 stipulated period of 18 months, on account of technical glitch in software of the Trademark office.
In light of these facts, the Hon’ble judge made the following observations:
- There is no ambiguity in the wordings of Section 36E of the trademark act, 1999. The act was adopted to give effect to the provisions of Madrid Protocol. Thus, The International applications in the present case were to be adjudicated strictly in accordance with provisions of the Act and not on the basis of 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.
- That a plain reading of Section 36E(5) of the Trademarks Act, 1999 indicates that , in a situation when an international application seeking registration in India has been opposed, The Section 36E(5) deeming provision under the Act shall not be applicable and it shall only apply where no opposition has been filed against an international application and the limitation period filing a notice of opposition has already expired. When an opposition is filed, the sections 9-21 are provided to be applied as per section 36E (4), which was not followed in the present case.
In accordance to the interpretation of law and reason provided by the Hon’ble Judge, the impugned orders passed by the Registrar were set aside and the oppositions filed by the Petitioners were restored. The Hon’ble Judge further directed that the protection extended to the international trademark applications would remain suspended till the oppositions of the Petitioners are decided.
Justice Navin Chawla further opined that in order 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 for the purpose of issuing proper instructions/ directions to to ensure that such irregularities not take place and protect the interests of foreign stakeholders against the inaction or negligence by the officials.
Conclusion
In order to achieve ‘Ease of doing business in India’ and sustain the faith of foreign investors in the Indian IP system, it is imperatively essential that negligence does not occur on the part of the Registrar who acts as a representative of the system. In furtherance to the grave nature of the matter, the Court also intimated the Ministry of Commerce and Industry for the purpose of issuing 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.
Author: Sanskriti Rastogi is a IXth Semester Law Student pursuing B.A. LL.B. (H) at the Amity Law School, Noida, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
Refrences
[i] WP(C)-IPD 55/2021 & WP(C)-IPD 76/2021.
Date of Decision 12.10.22
