Delhi High Court
Bridgestone Corporation vs Controller General Of Patents Designs & ... on 12 October, 2022
Author: Navin Chawla
Bench: Navin Chawla
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 30.08.2022
Date of Decision: 12.10.2022
+ W.P.(C)-IPD 55/2021 & CM 37157/2019
ALLERGAN INC AND ANR. ..... Petitioners
Through: Mr.Ranjan Narula, Adv.
versus
CONTROLLER GENERAL OF PATENTS DESIGNS AND
TRADE MARKS AND ANR. ..... Respondents
Through: Mr.Harish V.Shankar, CGSC with
Mr.Srish Kumar Mishra, Mr.Sagar
Mehlawat, Mr.Alexander Mathai
Paikaday, Advs.
+ W.P.(C)-IPD 76/2021 & CMs 17414/2019, 23630/2019
BRIDGESTONE CORPORATION ..... Petitioner
Through: Mr.Pravin Anand, Mr.Dhruv
Anand, Ms.Udita Patro, Ms.Nimrat
Singh, Advs.
versus
CONTROLLER GENERAL OF PATENTS DESIGNS
& TRADE MARKS & ANR ..... Respondents
Through: Mr.Harish V.Shankar, CGSC with
Mr.Srish Kumar Mishra, Mr.Sagar
Mehlawat, Mr.Alexander Mathai
Paikaday, Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
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,
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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
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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
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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
the above mentioned opposition may be
substituted with such application for cancellation
of protection."
8. The present petition challenges the above order(s) and email(s).
FACTUAL BACKGROUND IN WP(C)-IPD 76/2021
9. The Respondent No. 2, that is, Xingyuan Tire Group Co. Ltd., filed
the Application, being IRDI-3319196, seeking registration of the mark
"AMBERSTONE" in Class 12 on 15.12.2015. The same was published
in the Trade Marks Journal No. 1786 dated 27.02.2017 at page no. 6793.
The Trade Mark Application was open for an opposition period under the
provisions of the Act up to 27.06.2017.
10. The Petitioner, Bridgestone Corporation (hereinafter referred to as
„the Petitioner No. 2‟) filed its opposition against trade mark Application
on 25.05.2017. The Petitioner No. 2 was thereafter served with the
Counter-Statement filed by the Respondent No. 2 vide email dated
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23.04.2018. The Petitioner No. 2 submitted Evidence in Support of the
Opposition dated 08.06.2018. The Respondent no. 2, in turn, submitted a
Letter of Reliance dated 07.08.2018 and stated that it shall be relying
upon its previous submissions, while reserving liberty to file any
evidence at the time of hearing of the opposition.
11. The Respondent No. 1, however, suo motu passed the impugned
order dated 11.01.2019, which reads as under:-
"Proceedings were initiated under Section 21 of
the Trade Mark Act, 1999, by the opponent to
oppose the protection of the trademark under
above-mentioned IRDI based on above-mentioned
international registration of the mark under the
Madrid System As per provisions of the Madrid
System, any objection to protection of a mark
under international registration needs to be
communicated to the WIPO by Indian office in the
form of Provisional Refusal within a period of 18
months from the date of notification of the
international registration and if no Provisional
Refusal is communicated to the WIPO within such
period the mark gets protected.
It is found that due to certain administrative and
technical reasons the present Notice of Opposition
could not be communicated to the WIPO m the
form of Provisional Refusal based on opposition
within the period of 18 months from the date of
notification of the international registration. In
such circumstances the present IRDI is deemed
protected in India.
It is therefore ordered that status of the present
IRDI should be changed as PROTECTION
GRANTED and the present opposition will
therefore abate."
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12. The above order is in challenge in the present Writ Petition.
PROCEEDINGS IN THE WRIT PETITIONS
13. The operation of the impugned orders was stayed by this Court
vide order dated 20.08.2019 in W.P.(C)-IPD 55/2021, and vide order
dated 12.04.2019 in W.P.(C)-IPD 76/2021.
14. In W.P.(C)-IPD 76/2021, the Respondent No. 1 thereafter, vide its
email dated 13.05.2019, informed the Petitioner No. 2 as under:-
"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 WlPO 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
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the above mentioned opposition may be
substituted with such application for cancellation
of protection.
The aforesaid application for cancellation of
protection should be submitted within the period
of 30 days, through an email at
[email protected] and as an attachment in pdf
file format with subject the application for
cancellation of protection of the mark in
international registration under Madrid
Protocol."
15. In spite of service of notices to the respective Respondents No. 2 in
the petitions, as also the information sent to their respective agents of the
pendency of the present petitions, the respective Respondent No. 2 in
both of the petitions, have not entered appearance.
SUBMISSIONS OF THE PETITIONER NOS. 1 AND 2
16. The learned counsels for the Petitioner Nos. 1 and 2 in both the
cases primarily submit that the impugned orders were issued by the
Respondent No. 1 in gross violation of the principles of natural justice
and without any due consideration, thereby affecting the substantive
rights of the Petitioner Nos. 1 and 2, who have complied with all
statutory requirements within the prescribed timelines in the Opposition
Proceedings.
17. The learned counsels for the Petitioner Nos. 1 and 2 submit that in
terms of Section 36E(5) of the Act, the Registrar of Trade Marks is to
communicate its objection to the registration of any international
registration in India to the International Bureau, in the prescribed manner,
within a period of eighteen months from the date on which the advice is
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received from World Intellectual Property Organisation (in short,
„WIPO‟), informing about the international registration designating India;
the Respondent No.1 in both Writ Petitions has admitted to its failure to
communicate the factum of the opposition applications filed by the
Petitioner Nos. 1 and 2, even when the Petitioner Nos. 1 and 2 filed the
same within the stipulated time; this failure is only on the part of the
Respondent No.1, since both, the Petitioner Nos. 1 and 2 and the
respective Respondent No.2/Applicants, have complied with the
opposition procedure laid down in Section 21 of the Act. They submit
that the Petitioner Nos. 1 and 2 cannot be penalised for the fault of the
Registrar of Trade Marks.
18. They further submit that even otherwise, the conditions for
invoking the deeming clause in Section 36E(5) of the Act had not arisen
in the present cases, as the opposition to the application of the respective
Respondent No. 2 in the petitions, had been filed by the respective
Petitioner Nos. 1 and 2 well within time allowed/granted.
19. They submit that the decision of the Respondent No.1 to convert
the application in opposition of the registration of the mark to one
seeking rectification of the mark already registered, is also unsustainable
and prejudices the Petitioner Nos. 1 and 2, in as much as, the „Onus of
proof‟ shifts from the respective Respondent No. 2 in the Petitions to
show that their respective marks are entitled to be registered, to the
Petitioner Nos. 1 and 2 to show that the marks of the respective
Respondent No. 2 in the Petitions have been wrongly registered. They
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submit that the Petitioner Nos. 1 and 2 cannot be prejudiced by the
default of the Registrar of Trade Marks.
Submissions of the Respondent No.1:
20. On the other hand, the learned counsel for the Respondent No.1
admitted that due to a technical glitch in the functioning of a software
module, the Provisional Refusal (which is generated upon the filing of an
Opposition to an International Application) was not generated and could
not be communicated to the WIPO within the stipulated period and,
therefore, the international registrations of both the respective
Respondent No.2 in the Petitions were deemed protected. As a
consequence of this, as the international registration was already
protected in terms of Article 4 (1)(a) of the Protocol Relating to the
Madrid Agreement Concerning the International Registration of Marks
(hereinafter referred to as the „Madrid Protocol‟), the Trade Marks Office
passed the impugned orders dated 11.01.2019 and 15.05.2019, disposing
of the Petitioner Nos. 1 and 2‟s Opposition as abated.
21. The Respondent No.1 also stated in its Counter Affidavit that for
the purpose of safeguarding the interest of the Petitioner Nos. 1 and 2
herein, the Respondent No. 1 was taking steps to revive the opposition
and convert it into an application seeking invalidation/cancellation of the
trade mark so that the proceedings similar to an application for
rectification under Section 57 of the Act could be initiated.
ANALYSIS AND FINDINGS:
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22. I have considered the submissions made by the learned counsels
for the parties.
23. As the applications of the respective Respondent no. 2 in each of
the petitions were for international registrations under the Madrid
Protocol, I shall first consider the relevant provisions in the Act regarding
the same.
24. Chapter IVA of the Act provides for "Special Provisions Relating
To Protection Of Trade Marks Through International Registration Under
The Madrid Protocol".
25. Section 36E of the Act provides procedure of international
registrations where India has been designated. The same is reproduced
hereinbelow:-
"36E. International registrations where India
has been designated.-- (1) The Registrar shall,
after receipt of an advice from the International
Bureau about any international registration where
India has been designated, keep a record of the
particulars of that international registration in the
prescribed manner.
(2) Where, after recording the particulars
of any international registration referred to in
sub-section (1), the Registrar is satisfied that in
the circumstances of the case the protection of
trade mark in India should not be granted or such
protection should be granted subject to conditions
or limitations or to conditions additional to or
different from the conditions or limitations subject
to which the international registration has been
accepted, he may, after hearing the applicant if he
so desires, refuse grant of protection and inform
the International Bureau in the prescribed manner
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within eighteen months from the date on which the
advice referred to in sub-section (1) was received.
(3) Where the Registrar finds nothing in the
particulars of an international registration to
refuse grant of protection under sub-section (2),
he shall within the prescribed period cause such
international registration to be advertised in the
prescribed manner.
(4) The provisions of sections 9 to 21 (both
inclusive), 63 and 74 shall apply mutatis mutandis
in relation to an international registration as if
such international registration was an application
for registration of a trade mark under section 18.
(5) When 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 under such
international registration and, in case the
Registrar fails to notify the International Bureau,
it shall be deemed that the protection has been
extended to the trade mark.
(6) Where a registered proprietor of a trade
mark makes an international registration of that
trade mark and designates India, the international
registration from the date of the registration shall
be deemed to replace the registration held in India
without prejudice to any right acquired under
such previously held registration and the
Registrar shall, upon request by the applicant,
make necessary entry in the register referred to in
sub-section (1) of section 6.
(7) A holder of international registration of
a trade mark who designates India and who has
not been extended protection in India shall have
the same remedy which is available to any person
making an application for the registration of a
trade mark under section 18 and which has not
resulted in registration under section 23.
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(8) Where at any time before the expiry of a
period of five years of an international
registration, whether such registration has been
transferred to another person or not, the related
basic application or, as the case may be, the basic
registration in a Contracting Party other than
India has been withdrawn or cancelled or has
expired or has been finally refused in respect of
all or some of the goods or services listed in the
international registration, the protection resulting
from such international registration in India shall
cease to have effect."
(Emphasis supplied)
26. A reading of the above provision would show that on receipt of an
advice from the International Bureau about any international registration
where India has been designated, the Registrar of Trade Marks is to keep
a record of the particulars of that international registration in the
prescribed manner, whereafter, if the Registrar of Trade Marks is
satisfied that in the circumstances of the case, the protection of trade
mark in India should not be granted or such protection should be granted
subject to the conditions or limitations or to the conditions additional to
or different from the conditions or limitations subject to which the
international registration has been accepted, he may, after hearing the
applicant if he so desires, refuse grant of protection and inform the
International Bureau in the prescribed manner within a period of eighteen
months from the date on which the advice was received. On the other
hand, where, on receipt of and recording of the particulars of any
international registration, the Registrar of Trade Marks finds nothing in
the particulars to refuse the grant of protection, he shall within the
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prescribed period, cause such international registration to be advertised in
the prescribed manner.
27. Sub-section 4 of Section 36E of the Act prescribes that the
provisions of Sections 9 to 21, 63 and 74 of the Act shall apply mutatis
mutandis in relation to an international registration.
28. Sub-section 5 of Section 36E of the Act, whereupon the entire
controversy in the present petitions revolves, provides that when the
protection of an international registration has not been opposed and the
time for notice of opposition has expired, the Registrar of Trade Marks
shall within a period of eighteen months of the receipt of the advice from
the International Bureau, notify the International Bureau its "acceptance"
of extension of protection of the trade mark under such international
registration. It further provides that in case the Registrar of Trade Marks
fails to notify the International Bureau of its acceptance, it shall be
deemed that the protection has been extended to the trade mark.
29. A bare reading of the above provision would show that where the
international registration has been opposed, the deeming provision
contained in Sub-section 5 of Section 36 E of the Act shall have no
application. It is applicable only where there is no opposition filed to
such international application and the time for notice of opposition has
expired. In such eventuality, the Registrar of Trade Marks is to, within a
period of eighteen months of receipt of the advice from the International
Bureau, notify the International Bureau its acceptance of extension of
protection of the trade mark under such international registration. It is
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further provided that 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. The deeming provision
is, therefore, invoked only where the opposition to such international
registration has not been filed within the time for notice of opposition. It
is merely intended to remedy a situation where the Registrar of Trade
Marks fails to communicate its acceptance of the application to the
International Bureau.
30. As noted hereinabove, Sub-section 5 of Section 36E of the Act
does not deal with a situation where the opposition to such international
registration stands filed within the time period prescribed, for in that
eventuality, Sub-section 4 of Section 36E of the Act has already provided
that the provisions of Sections 9 to 21 shall apply mutatis mutandis in
relation to such international registration.
31. In Bengal Immunity Company Limited v. State of Bihar and
Others, (1955) 2 SCR 603, the Supreme Court while considering the
deeming provision contained in the Explanation to Article 286 (1) of the
Constitution of India, held that as under:
"Legal fictions are created only for some
definite purpose....a legal fiction is to be
limited to the purpose for which it was
created and should not be extended beyond
that legitimate field."
32. In Vodafone International Holdings BV v. Union of India and
Another, (2012) 6 SCC 613, the Supreme Court while considering
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Section 9 of the Income Tax Act, 1961, reiterated that a deeming fiction
can be invoked only where the pre-conditions provided for invocation
thereof are satisfied. It was held that a legal fiction has a limited scope
and cannot be expanded by giving purposive interpretation.
33. In the present case, the deeming provision under Section 36E(5) of
the Act is merely intended to apply where, though no opposition to the
registration of the mark has been filed within the time prescribed, the
Registrar of Trade Marks has failed to communicate the same to the
International Bureau within a period of eighteen months of receipt of the
advice. In case, there was no such deeming provision, the applicant of
such international registration would have been left remediless as, even
without any opposition having been filed, the application would have
been left pending for fault of the Registrar of Trade Marks.
34. On the other hand, 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.
35. In the present case, admittedly the oppositions were filed by the
Petitioner Nos. 1 and 2 within the time prescribed and were pending
consideration before the Respondent No. 1. Only because the Registrar of
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Trade Marks failed to communicate the fact of pendency of such
oppositions before him to the International Bureau, the respective
Respondent No. 2 in the Petitions could not gain an advantage and the
Petitioner Nos. 1 and 2 could not suffer a prejudice. This is certainly not
the intent of Section 36E(5) of the Act.
36. Reading of Section 36E(5) of the Act would also show that it is the
"acceptance" of the application that is to be communicated to the
International Bureau within 18 months, and not its refusal. The deeming
fiction is attracted when the Registrar of Trade Marks fails to
communicate its "acceptance". Where 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.
37. The conversion of opposition to a cancellation cannot remedy the
prejudice caused to the petitioners by the impugned orders. It is trite law
that while at the stage of application seeking registration of the trade
mark, the burden of proof is on the applicant seeking such registration to
show that the mark is entitled to be registered (Refer:- London Rubber
Co. Ltd. v. Durex Products Incorporated And Another, AIR 1963 SC
1882), in case of a petition seeking rectification/cancellation of such
registration, the burden of proof is on the applicant seeking such
rectification/cancellation (Refer:- Jabbar Ahmed v. Prince Industries &
Anr., 2003 SCC OnLine Del 455). Therefore, the offer of the respondent
no.1 to convert the opposition of the petitioners to an application for
cancellation, cannot be of any solace to the petitioners. Section 21 of the
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Act creates a right in favour of an interested party to oppose the
registration of a trade mark. Where such right has been invoked by a
party in accordance with law, such right cannot be negated by the
inaction of the Registrar of Trade Marks, on which such opponent has no
control.
38. At this stage, I must also consider the applicability of the Madrid
Protocol. The relevant provisions of the Madrid Protocol so far as are
relevant to the present Petitions, are reproduced hereinbelow:-
"Article 4
Effects of International Registration
(1) (a) From the date of the registration or
recordal effected in accordance with the
provisions of Articles 3 and 3ter, the protection of
the mark in each of the Contracting Parties
concerned shall be the same as if the mark had
been deposited direct with the Office of that
Contracting Party. If no refusal has been notified
to the International Bureau in accordance with
Article 5(1) and (2) or if a refusal notified in
accordance with the said Article has been
withdrawn subsequently, the protection of the
mark in the Contracting Party concerned shall, as
from the said date, be the same as if the mark had
been registered by the Office of that Contracting
Party.
(b) The indication of classes of goods and
services provided for in Article 3 shall not bind
the Contracting Parties with regard to the
determination of the scope of the protection of the
mark.
(2) Every international registration shall enjoy
the right of priority provided for by Article 4 of
the Paris Convention for the Protection of
Industrial Property, without it being necessary to
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comply with the formalities prescribed in Section
D of that Article.
Article 4bis
Replacement of a National or Regional
Registration by an International Registration
(1) Where a mark that is the subject of a
national or regional registration in the Office of a
Contracting Party is also the subject of an
international registration and both registrations
stand in the name of the same person, the
international registration is deemed to replace the
national or regional registration, without
prejudice to any rights acquired by virtue of the
latter, provided that
(i) the protection resulting from the
international registration extends to the
said Contracting Party under Article
3ter(1) or (2),
(ii) all the goods and services listed in the
national or regional registration are also
listed in the international registration in
respect of the said Contracting Party,
(iii) such extension takes effect after the
date of the national or regional
registration.
(2) The Office referred to in paragraph (1)
shall, upon request, be required to take note in its
register of the international registration.
Article 5
Refusal and Invalidation of Effects of
International Registration in Respect of Certain
Contracting Parties
(1) Where the applicable legislation so
authorizes, any Office of a Contracting Party
which has been notified by the International
Bureau of an extension to that Contracting Party,
under Article 3ter(1) or (2), of the protection
resulting from the international registration shall
have the right to declare in a notification of
refusal that protection cannot be granted in the
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said Contracting Party to the mark which is the
subject of such extension. Any such refusal can be
based only on the grounds which would apply,
under the Paris Convention for the Protection of
Industrial Property, in the case of a mark
deposited direct with the Office which notifies the
refusal. However, protection may not be refused,
even partially, by reason only that the applicable
legislation would permit registration only in a
limited number of classes or for a limited number
of goods or services.
(2) (a) Any Office wishing to exercise such
right shall notify its refusal to the International
Bureau, together with a statement of all grounds,
within the period prescribed by the law applicable
to that Office and at the latest, subject to
subparagraphs (b) and (c), before the expiry of
one year from the date on which the notification of
the extension referred to in paragraph (1) has
been sent to that Office by the International
Bureau.
(b) Notwithstanding subparagraph (a),
any Contracting Party may declare that, for
international registrations made under this
Protocol, the time limit of one year referred to
in subparagraph (a) is replaced by 18
months.
(c) Such declaration may also specify
that, when a refusal of protection may result
from an opposition to the granting of
protection, such refusal may be notified by
the Office of the said Contracting Party to the
International Bureau after the expiry of the 18
month time limit. Such an Office may, with
respect to any given international
registration, notify a refusal of protection
after the expiry of the 18-month time limit, but
only if
(i) it has, before the expiry of the 18-
month time limit, informed the International
Bureau of the possibility that oppositions may
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be filed after the expiry of the 18-month time
limit and
(ii)the notification of the refusal based
on an opposition is made within a time limit
of one month from the expiry of the opposition
period and, in any case, not later than seven
months from the date on which the opposition
period begins.
(d) Any declaration under subparagraphs (b)
or (c) may be made in the instruments referred to
in Article 14(2), and the effective date of the
declaration shall be the same as the date of entry
into force of this Protocol with respect to the State
or intergovernmental organization having made
the declaration. Any such declaration may also be
made later, in which case the declaration shall
have effect three months after its receipt by the
Director General of the Organization (hereinafter
referred to as "the Director General"), or at any
later date indicated in the declaration, in respect
of any international registration whose date is the
same as or is later than the effective date of the
declaration.
(e) Upon the expiry of a period of ten
years from the entry into force of this Protocol,
the Assembly shall examine the operation of the
system established by subparagraphs (a) to (d).
Thereafter, the provisions of the said
subparagraphs may be modified by a unanimous
decision of the Assembly.
(3) The International Bureau shall, without
delay, transmit one of the copies of the
notification of refusal to the holder of the
international registration. The said holder shall
have the same remedies as if the mark had been
deposited by him direct with the Office which has
notified its refusal. Where the International
Bureau has received information under paragraph
(2)(c)(i), it shall, without delay, transmit the said
information to the holder of the international
registration.
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(4) The grounds for refusing a mark shall be
communicated by the International Bureau to any
interested party who may so request.
(5) Any Office which has not notified, with
respect to a given international registration, any
provisional or final refusal to the International
Bureau in accordance with paragraphs (1) and
(2) shall, with respect to that international
registration, lose the benefit of the right provided
for in paragraph (1).
(6) Invalidation, by the competent authorities of
a Contracting Party, of the effects, in the territory
of that Contracting Party, of an international
registration may not be pronounced without the
holder of such international registration having,
in good time, been afforded the opportunity of
defending his rights. Invalidation shall be notified
to the International Bureau."
(Emphasis supplied)
39. In terms of Article 14 of the Madrid Protocol, India has made the
following Declarations, as far as Article 5 is concerned, in its instrument
of accession:
"In accordance with Article 5(2)(d) of the Madrid
Protocol (1989), under Article 5(2)(b) of the
Protocol, the time limit of one year to exercise the
right to notify a refusal of protection referred to in
Article 5(2)(a) thereof is replaced by 18 months
and under Article 5(2)(c) of the said Protocol,
when a refusal of protection may result from an
opposition to the granting of protection, such
refusal may be notified to the International
Bureau after the expiry of the 18-month time
limit;"
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40. A combined reading of the above provisions would show that as
far as the Madrid Protocol is concerned, the Contracting Party has a right
to declare in a notification its „refusal‟ to grant protection in the said
contracting party to the mark which is the subject matter of extension as
notified by the International Bureau. Any office of the Contracting Party
wishing to exercise such right as to notify its „refusal‟ to the International
Bureau, together with the statement of all grounds and within the period,
which in the present case as far as India is concerned is eighteen months,
shall do so as prescribed by the law applicable to that office. Sub-clause
C of Article 5(2) of the Madrid Protocol further provides that a
declaration of „refusal‟ may also result from an opposition to the granting
of such protection, in which event such „refusal‟ may be notified to the
International Bureau after an expiry of the time limit of eighteen months.
Article 4(1)(a) and 5(5) further states that failure of the office of the
Contracting Party to notify its provisional or final „refusal‟ to a given
international registration shall result in such Contracting Party losing its
right to such refusal and the protection of the mark in question shall
extend to such Contracting Party.
41. It is apparent that though India is a signatory to the Madrid
Protocol, the consequential amendment made in the Act by way of
insertion of Chapter IVA to the Act is not in strict conformity with the
provisions of the Madrid Protocol. There is a marked difference in the
language used in Article 5 of the Madrid Protocol, as reproduced
hereinabove, and Section 36E(5) of the Act. Unlike the Madrid Protocol,
where the Trade Mark office of the Contracting State is to communicate
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its „refusal‟ to register the trade mark to the International Bureau, in
Section 36E(5) of the Act, 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.
42. It is settled law that an Act has to be interpreted on its own plain
language and it is only in cases where there is an ambiguity or doubt on
the interpretation of a statute that aid of the International Convention is
taken to provide the necessary statutory interpretation. If the statutory
enactment is clear and unambiguous, it must be construed according to its
meaning even though it is contrary to the Treaty to which India is a
signatory. In M/s. V.O. Tractoroexport, Moscow v. M/s. Tarapore &
Company And Another, (1969) 3 SCC 562, the Supreme Court explained
this principle as under:
"15. Now, as stated in Halsbury's Laws of
England, Vol. 36, p. 414, there is a presumption
that Parliament does not assert or assume
jurisdiction which goes beyond the limits
established by the common consent of nations and
statutes are to be interpreted provided that their
language permits, so as not to be inconsistent with
the comity of nations or with the established
principles of International law. But this principle
applies only where there is an ambiguity and must
give way before a clearly expressed intention. If
statutory enactments are clear in meaning, they
must be construed according to their meaning
even though they are contrary to the comity of
nations or International law.
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16. We may look at another well-recognized
principle. In this country, as is the case in
England, the treaty or International Protocol or
convention does not become effective or operative
of its own force as in some of the continental
countries unless domestic legislation has been
introduced to attain a specified result. Once,
Parliament has legislated, the Court must first
look at the legislation and construe the language
employed in it. If the terms of the legislative
enactment do not suffer from any ambiguity or
lack of clarity they must be given effect to even if
they do not carry out the treaty obligations. But
the treaty or the Protocol or the convention
becomes important if the meaning of the
expressions used by the Parliament is not clear
and can be construed in more than one way. The
reason is that if one of the meanings which can be
properly ascribed is in consonance with the treaty
obligations and the other meaning is not so
consonant, the meaning which is consonant is to
be preferred. Even where an Act had been passed
to give effect to the convention which was
scheduled to it, the words employed in the Act had
to be interpreted in the well-established sense
which they had in municipal law. (See Barras v.
Aberdeen Steam Trawling & Fishing Co. Ltd.
[(1933) AC 402])."
43. 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.
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44. 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 passed
by the Respondent No. 1.
45. From the reading of the impugned order(s)/email(s) it is apparent
that the Respondent no. 1 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.
46. In light of the above, the impugned orders are set aside. The
oppositions are restored back to their original numbers. The protection
extended to the trade marks(s) of the respective Respondent No. 2 in the
petitions based on their applications shall remain suspended till the
decision of the oppositions filed by the Petitioner Nos. 1 and 2 and shall
abide by such decision.
POST SCRIPT
47. I can only hope that the present two cases are the only aberrations
in the working of the Madrid Protocol. Such failure of the Office of the
Registrar of Trade Marks not only would 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 is
unpardonable.
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48. A copy of this order be, therefore, 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 stake holders in India‟s capabilities.
NAVIN CHAWLA, J.
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