09 November 2022

Trademarks – International registration – Deemed protection under Section 35E(5) cannot be extended when opposition filed within time

The Delhi High Court has held that in case of failure of the Registrar of Trade Marks to notify its acceptance of extension of the trademarks under international registration (under the Madrid Protocol) where India has been designated to the International Bureau, a deemed protection cannot be extended to the trademark where the same has been opposed within the time for notice of opposition.

The Court in this regard rejected the contention that since the Registrar of Trade Marks had failed to notify the International Bureau of its ‘acceptance’ within the prescribed time, as per the provisions of Section 35E(5) of the Trade Marks Act, 1999, it shall be deemed that the protection has been extended to the trademark.

The High Court in this case Allergan Inc. v. Controller General of Patents Designs and Trademarks noted that if the deeming provision could be invoked where the opposition to such international registration has been filed, it would be prejudicial to the opponent of such registration for no fault of his. It also observed that where any opposition stands filed within the time prescribed, the question of the Registrar of Trade Marks communicating its ‘acceptance’ to the application without first deciding on the opposition filed, does not arise.

The Court in its decision dated 12 October 2022 also noted that there is a marked difference in the language used in Article 5 of the Madrid Protocol and Section 36E(5). It observed that while in Madrid Protocol, it is the failure to communicate ‘refusal’ within the time prescribed, which shall result in deemed extension of protection to the trademark, in Section 36E(5), it is the failure to convey ‘acceptance’ that leads to such deeming extension of protection.  

Further, the Court also rejected the remedy of the Controller General to convert the opposition of the petitioners to an application for cancellation. It was of the view that the right of the petitioner to oppose the registration of the trademark cannot be negated by the inaction of the Registrar of Trade Marks.

Setting aside the order of the Controller, the High Court also observed that if the slogan of ‘Ease of doing business in India’ is truly to be achieved, such act of negligence of the Controller is unpardonable.

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