On the very relevant question of the appointment of the Chairman of the Intellectual Property Appellate Board (IPAB), a request had been made to the Secretary General of the Supreme Court of India in the month of April, 2019, to seek recommendations from the CJI, in lieu of his/her power under Section 85(6) of the Trademarks Act, by the Department of Promotion of Industry and industrial Trade, Government of India. A publicly available letter notifying this can be accessed here. This anticipated request had not been taken up yet, in spite of several reminders sent to the institutional body.  The ex- Chairman, Justice Manmohan Singh, had retired on attaining his superannuation on 21.09.2019, and since then the IPAB has completely been dysfunctional, thereby being an impediment in adequate access to justice, especially in IP disputes.

Justice Pratibha Singh of the Delhi HC also had recently, on 23rd October 2019, in a strong order raised this issue in relation to the dysfunctional nature of the IPAB and had sought a reply from the Additional Solicitor General of India for the Delhi HC Ms. Maninder Acharya on the same. She said, and I quote:

“The IPAB is a specialized forum which was constituted under the Trade Marks Act and the Patents Act in order to ensure expeditious disposals of intellectual property matters. The manner in which the IPAB has been functioning during the last over 15 years shows that at every stage, there has been delay in the appointments being made to the IPAB, both of judicial members and technical members. Further, adequate infrastructure and autonomy is also not granted to the IPAB in order to make its functioning efficient and smooth. The statement of objects and reasons when the Trade Marks Act was amended, clearly records that the purpose of the IPAB is for speedy disposal of appeals and rectification applications, which at that time was jurisdiction which was vested in the High Courts. However, this purpose has been completely set at naught owing to the manner in which the IPAB has been functioning since the time it has been constituted.”

The full order can be accessed here.

Even in the case of Mylan Laboratories v. Union of India, Justice J.R. Midha, had anticipated this vacancy and pointed out in his judgment that either an extension or quick appointment to this post of the Chairman is imperative, to avoid the IPAB becoming dysfunctional post 21st September, however no action in lieu of the same had been taking. He had stated in para 8.3 of the judgment, and I quote:

“The Chairman, as per the report of the Union of India, is likely to demit office in around September, 2019. The process of appointment of a fresh chairman would again plague the system and leave the IPAB dysfunctional. It would be in the interest of justice that the Chairman, IPAB be directed to continue to hold office until the appointment of a new Chairman. This is permissible under Section 89 of the Trade Marks Act, 1999 which provides that the Chairman may continue to hold office until expiry of 3 months from the date of receipt of notice or until a person is duly appointed as successor, enters upon his office or until the expiry of his term of office, whichever is earlier.”

 The full judgment can be accessed here.

As anticipated, on the 1st of October, IPAB had ceased to operate and canceled all scheduled hearings until the end of the year citing “administrative reasons”, in all the benches, as notified here.

The recent judgment of the SC in the case of Rojer Matthew v. South Indian bank Ltd., which had rendered the rules under the Finance Act unconstitutional, had further complicating the process of appointments under the IPAB, prolonging the dysfunctional nature, as previously covered on the blog here.

In an extremely important update, the SC has finally, through a 3-judge bench, in the case of The International Association for Protection of Intellectual Property (India group) v. Union of India, gone on to further Justice Midha’s Delhi HC order, without referring to it, and has held the position of the Chairman cannot be held to be vacant. While claiming that the appointment of the new chairman is “likely to be completed soon”, the SC has ordered an extension of the period of Chairmanship of Justice Manmohan Singh, for a year, from the date of his superannuation, as deemed to have not taken a break from service. This, although is an important step undertaken by the court to avoid a dysfunctional board, however, exposes the lackadaisical administrative attitude taken both by the Government departments as well as the Court in quickly rendering these appointments and offering an opportunity of a quick access to justice. As far as the post of Vice Chairman and Technical members is concerned, an advertisement had been rendered in the public domain for the same, however no steps have been taken because of the judgment ruling the rules under Finance Act unconstitutional, further delaying the active functioning of the IPAB.

Another question regarding the relocation of the Principal bench of Madras or a new central bench was brought up, however the government sought time to seek directions from the concerned department in lieu of the same.

Full Order, providing for the extension of the term of Justice Manmohan can be accessed here.


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