Delhi High Court interprets provisions of Madrid Protocol- India

November 10, 2022
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The Hon’ble Delhi High Court set aside the orders as passed by the Controller General of Patent Design and Trademarks and restored the oppositions filed by Allergan Inc. and Bridgestone Corporation. The Hon’ble Judge further directed that the protection extended to the International Trademark Applications would remain suspended till the oppositions restored are decided and shall abide by such decision.

Brief facts of the case

In the matters of Allergan Inc. & Anr (hereinafter referred to as Petitioner No.1) v. Controller General of Patent Design and Trademarks and Anr.[1] (hereinafter referred to as Respondent and Bridgestone Corporation (hereinafter referred as Petitioner No. 2) v. Controller General of Patent Design and Trademarks& Anr[2] (hereinafter Respondent), the Respondent under the Madrid Protocol failed to communicate the filing of oppositions by both the Petitioners to the International Bureau within 18 months..

Contentions raised by Petitioners 1 and 2

  • Respondent has passed impugned orders in gross violation of the principle of Natural Justice and without any due consideration, thereby affecting substantive rights of Petitioner Nos. 1 & 2.
  • The oppositions filed by the Petitioner Nos. 1 and 2 were within the stipulated time as laid down in Section 21of the Trademarks Act.
  • The Respondent failed to comply with provisions of Section 36E(5) of the Act to communicate the objection to the registration of any international registration in India to the International Bureau in the prescribed manner within a period of eighteen months, failure to which the trademark shall be considered protected in India. Hence, the Petitioners 1 & 2 cannot be penalized for the fault of the Respondent.
  • Petitioners 1 & 2 further submitted the condition for invoking the deeming clause in Section 36E(5) of the Act had not arisen in the present case, as the opposition to the applications had been filed by the Petitioners 1 & 2 well within time allowed/granted.
  • To protect the interest of the Petitioners, Respondent’s step to convert an application in opposition of the registration of the mark to one seeking rectification of the mark already registered is unsustainable and prejudice as the ‘Onus of Proof’ shifts from Respondent to the Petitioners to show that the marks have been wrongly registered.

Contentions raised by Respondent

  • Respondent admitted that due to 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, as a consequence both the international registrations in which oppositions were filed by Petitioners 1 & 2 were deemed protected, disposing of Petitioner 1 & 2’s opposition as abated. Respondent took steps to revive the opposition and convert it into an application seeking invalidation/cancellation of the trademark so that the proceedings similar  to an application for rectification under Section 57 of the Act could be initiated COURT OBSERVATIONS
  • That a bear reading of Section 36E(5) of the Trademarks Act, 1999 shows that where an International application seeking registration in India has been opposed, the deeming provision contained in Section 36E(5) of the Act shall have no application and it should only be applicable only where there is no opposition filed to an International Application and the time for filing such a notice of opposition has expired.

The Hon’ble judge also relied upon various authorities to support the proposition that a legal fiction like a ‘deeming provision’ can only be invoked where the precondition provided for invocation are satisfied.

  • To convert the Petitioners’ oppositions to applications seeking cancellation cannot be considered to provide solace to the Petitioners by the Respondent since it is trite law that in the case of pending trademark application, the onus is on the Application seeking registration, as opposed to a rectification where the onus is on the Applicant seeking rectification.
  • That from a reading of the impugned orders it is apparent that the Trademark office had applied the Madrid Protocol strictly without appreciating the difference between the Protocol and the Act. The International Applications were to be dealt in accordance with the Act only since there was no ambiguity in its wordings.
  • That the amendment made in the Indian Trademarks Act pursuant to India signing the Madrid Protocol is not in strict conformity with the Protocol. While in the Madrid Protocol, it is the failure to communicate the ‘refusal’ within the time prescribed, which results in the deemed extension of protection to the Trade Mark, under Section 36E(5) of the Act, it is the failure to convey ‘acceptance’ that leads to such deemed extension of protection.

Court’s Ruling

The Hon’ble Judge accordingly set aside the orders as passed by the Respondent and restored the opposition filed by the Petitioners. 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 and the Applicants in respect of the said trademark shall abide by the same.

Additional Court Ruling

The Hon’ble Judge was of the view 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 is unpardonable.

The Hon’ble Court also passed directions to forward the copy of this order 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.


Principally for matters concerning international trademark applications, it becomes a supplement responsibility on the shoulders of the concerned authorities to deal with utmost diligence and attention to its duty.

In the era of global competition, when simultaneous efforts are being taken to make India embark its position in the international sphere, these acts of negligence only bring bad attention to its image deteriorating it by ten steps.

[1] W.P. (C)- IPD 55/2021 & CM 37157/ 2019

[2] W.P.(C)-IPD 76/2021 & CMs 17414/2019, 23630/2019

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