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Highlights of the IPAB Decision

The Intellectual Property Appellate Board (“IPAB”) was set up under the Trade Marks (“TM”) Act, 1999. The then Trade and Merchandise Marks Act, 1958 was thoroughly revisited when India joined the World Trade Organisation (“WTO”) and became a signatory to the Trade Related Intellectual Property Rights (“TRIPS”) agreement in 1994. Since an alternative efficient and speedy mechanism for resolution of disputes relating to intellectual property rights was essential to have an effective Intellectual Property Rights (“IPR”) regime, the IPAB was set up transferring the jurisdiction of the High Courts in specific matters relating to adjudication of intellectual property rights for speedy disposal. The IPAB hears appeals from the orders and decisions of the Registrars of Trademarks, Geographical Indications and Patents. The IPAB is thus vested with the jurisdiction earlier exercised by the High Courts and supplements the functioning of the High Court in this respect.

Here are some of the key highlights of the decision:

  1. Independence of the Judiciary/Separation of Powers

The court agrees with the main thrust of petition that the current composition of the IPAB (and the eligibility criteria) poses a grave threat to the independence of the judiciary and the separation of powers doctrine under the constitution of India. Both these are sacrosanct norms that qualify as the “basic structure” of the constitution. The court draws from a long line of well-established precedents in this regard (including the recent National Tax Tribunal judgment) where the court comes down rather strongly on the government tendency to usurp judicial powers through tribunals).

  1. Selection Panel must be Predominantly Judicial

The court agrees that the selection committee for the selection of Vice Chairman (and other members of the IPAB) ought to be predominated by judicial minds and not stacked with executive picks. In fact, it was this latest petition and strategic thrust that effectively moved the main writ out of its long 4 year slumber and got us today to where we are. Kudos to Vineet Subramani for pushing this through so strategically and to Sai Vinod for all his painstaking RTI’s and research on a number of data points that we put together for this last mile fight. The court notes:

“The selection process has been left entirely to the Executive, though the functions of the Tribunal are judicial. This act is a direct affront to the basic structure, which is fundamental to the Constitution of India. The 1st respondent has totally overstepped and acted in disregard to the law laid down by the Supreme Court in Union of India Vs. R.Gandhi, President, Madras Bar Association, ((2011) 10 SCC 1) by turning a blind eye….. The Committee as it exists today is packed with an over-dose of Executive with the lone voice of the Chairman of IPAB is restricted to that of a member.”

The court therefore orders as below:

“The Constitution of the Committee for the appointment of members, both for the Vice-Chairman, Judicial Member and Technical Member is declared as contrary to the basic structure of the Constitution. In consequence thereof, the 1st respondent will have to re-constitute the Committee providing a predominant role in the selection process to the judiciary.”

  1. Technical Adjudicator Must Still Have Legal/Judicial Wherewithal

The court agrees that a technical member appointed to the IPAB also participates in the decision making process and is not therefore just a “technical” aid to the decision making process but an active adjudicator on points of law, despite not possessing the requisite judicial competence. More egregiously, such a person becomes eligible to be Vice Chairman and then to even head the IPAB as “Chairman”. Therefore it is critical that the technical member have enough legal/judicial competence before he/she can be called upon to adjudicate on the IPAB.

To appreciate this point, some background is essential. Section 85 of the Trademarks Act stipulates that the following persons are eligible for appointment as technical members of the IPAB (trademarks).

“(a) has….held a post not lower than the post of a Joint Registrar for at least five years; or

(b) has, for at least ten years, been an advocate of a proven specialised experience in trade mark law.”

A government of India notification then goes on to provide that a Joint Registrar (trademarks) must possess the following qualifications:

”(i) Degree in Law from a recognised University; (ii) Twelve years practice at a Bar or Twelve years’ experience in a State Judicial Service or in the Legal Department of a State Government or of the Central Government or in the processing of applications for registration filed under the Trade Marks Act or Geographical Indications Act or in teaching law in a recognised University or Institute; or Master’s Degree in Law of a recognised University with ten years’ experience in teaching law or in conducting research in law in a recognised University or Research Institution.”

The court held that, “Accordingly, we hold that under Section 85(4)(a), a person holding the post of not less than the post of Joint Registrar can be qualified for appointment as Technical Member only when he was appointed in the said post of Joint Registrar with 12 years of practice in a State Judicial Service or at the bar and not otherwise. …By adopting this methodology, this approach, we believe, would also uphold the confidence of public apart from increasing the efficiency of the Tribunal. Thus, Section 85(4)(a) of the Trade Marks Act, 1999 will have to be read down to make eligible only those who held a post not lower than the post of Joint Registrar with the qualification of practice at bar or experience in the State Judicial Service as desired in the Notification dated 17.2.2011 issued by the Ministry of Commerce and Industry.”

  1. Role of executive

The court says about the role of executive in the appointment that:

“….However high one may be in holding an Executive post, the role of a judicial member, being different, such a person cannot be asked to exercise the function particularly as a Judicial Member without any experience. …..merely because someone holds the post in a Government Department he cannot be bestowed with the eligibility of being appointed as a Judicial Member sans experience. Also such a person cannot be treated on par with a Judicial Officer. We do not understand as to how an Officer working with the Executive would satisfy the requirement of legal training and experience. In other words, when such an Officer cannot become a judge, he cannot also act in the said capacity. We only reiterate the reasoning assigned by the Supreme Court in this regard. Therefore, we have no hesitation in holding that Section 85(3)(a) is unconstitutional, particularly, in the light of the directions (i) and (ii) rendered in Union of India Vs. R.Gandhi, President, Madras Bar Association, ((2011) 10 SCC 1)…..”

 “Section 85(3)(a) of the Trade Marks Act, 1999, which provides for the eligibility of a member of the Indian Legal Service and has held the post of Grade I of that Service for at least three years for qualification for appointment to the post of a Judicial Member in IPAB, is declared as unconstitutional, being contrary to the basic structure of the Constitution” . The court also holds that such ILS officers cannot be eligible to be considered for election to the post of Vice Chairman: “1) Sub-section 2(b) of Section 85, which provides for a qualification qua a member of Indian Legal Service who held the post of Grade I of service or of higher post at least five years to the post of Vice-Chairman is declared unconstitutional, being an affront to the separation of powers, independence of judiciary and basic structure of the Constitution.”

  1. The CJI Consultation Process

Section 85 (6) of the Trademarks Act provides that: “No appointment of a person as the Chairman shall be made except after consultation with the Chief Justice of India.” The practice has been that the CJI recommends a person for consideration as Chairman and the name is then sent to the Appointments Committee of the Cabinet (ACC) for “approval”.

The court takes issue with this, noting that the consultation with the CJI does not mean that his recommendation must be “approved” by the ACC.

The court orders as below:

“Recommendation of the Chief Justice of India to the post of Chairman should be given due consideration by the Appointment Committee of the Cabinet and the process does not involve any approval”.

The above propositions are unfortunately not worded in the clearest of terms and the court could have been a bit more explicit on this count.

Conclusion

“The IPAB plays a pivotal role in resolving the commercial disputes. A good adjudicatory process is a sine qua non for the development of the Society, more so, in the field of Commerce. With India being a rapidly developing Industrial nation, spreading its commercial activities, it is in national interest to have an adjudicatory forum satisfying the needs of various commercial entities. It also creates a good atmosphere of business development and industrial peace. It further enhances the reputation of our justice delivery system from the point of view of other countries. It brings forth an investor’s confidence. Hence, from the context of public interest also, the IPAB has got an eminent role to perform.”

About the Author

Archi RoyArchi Roy is a second year student pursuing her B.B.A. LL.B. degree from University of Petroleum and Energy Studies, Dehradun. Her areas of interest are Constitutional and Family Law. Research work has always been her field of special interest. Presently, she is interning with the Model Governance Foundation.

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