Allergan Inc and Anr v. Controller General of Patents Designs and Trademarks and Anr

NAVIN CHAWLA, J. OCTOBER 12, 2022/Arya/rv/DJ/AB

* 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, 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 Mad