Introduction
The Intellectual Property Appellate Board (hereinafter, “IPAB”) has ceased to function as per the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021 (hereinafter, “Ordinance”) promulgated by the President of India as on 4th April, 2021. The Ordinance also brought amendment into the Copyright Act, 1957 (hereinafter, “CA”), Trademarks Act, 1999 (hereinafter, “TM Act”), Patents Act, 1970 (hereinafter, “PA”), Geographical Indications Act 2000 (hereinafter, "GI Act) and Plant Variety and Farmers Rights Act 2001. It also transferred the IPAB’s jurisdiction to the High Court (hereinafter, “HC'') and Commercial courts. This article seeks to examine whether the decision to abolish such a statutory body was justified or would its ghost eventually come to haunt the judiciary in the near future.
Establishment of the IPAB
IPAB was established in 2003 in lieu of India’s international obligation under Article 41 of The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement to have a judicial system that particularly enforces Intellectual Property (hereinafter, “IP”) rights apart from law enforcement in general. Consequently, IPAB was created with effect from 15 September 2003 under the Trade Marks Bill, 1999.1
The idea behind having a separate tribunal for IP related matters was to not overburden the already burdened HCs and relieve it of some duties. IPAB was created with a view to provide technical and judicial experts to adjudicate upon the matters which were fairly new to the country and avoid accumulation and pendency of litigation. Originally, IPAB was set up to hear appeals, matters on revocation and rectification petition against the trade mark registry which were powers exercised by the HC during that time. Soon, the power to exercise on appeals concerning the PA and the Copyright Board were also shifted from the HC to the IPAB. Overt time, the IPAB had gained huge visibility and respect for its ability to address complex issues.2
IPAB’s impact over intellectual property laws
Copyright Act, 1957
The power of the IPAB has been transferred to the commercial courts and HCs after deletion of Section 12 of the CA. The Commercial courts now have the power to make the final decision regarding the term of copyright in anonymous and pseudonymous work, to grant license to publish, reproduce work or publish or produce translations, etc. The HC has the power to rectify the Registrar of Copyrights and hear appeals against the Registrar.3
Patent Act, 1970
Under the PA, the HC has been granted the power to rectify the Registrar of Patents and to revoke the patent if granted to a fraud person and consequently grant it to the true inventor.4
Trademarks Act, 1999
Apart from the power to rectify the Registrar of Trademarks, the HC now has the power to impose limitations on grounds of colour, non-use, distinctiveness of the trademark, and decisions regarding furnishing of an applicant’s security, etc.5
Geographical Indications of Goods (Registration and Protection) Act, 1999
The Registrar and the HC have the power to give effect to the removal of a register in case there has been a failure to pay a fee or renewal. The HC has the higher power to rectify the Registrar and to make decisions regarding the admission of evidence in proceedings. Apart from these, it can also issue certificates on validity of registration and put a stay on the proceedings if registration is sought to be invalid.6
Protection of Plant Varieties and Farmers' Rights Act, 2001
The HC now has the power to make decisions regarding revocation/ modification of license or regarding the registration of a variety or a licensee of a variety.7
Abolishment of IPAB: Was it a wise decision?
The main reason given behind this action was that IPAB was unable to deliver speedy justice and instead was a burden on the government’s exchequer. There have been arguments about its constitutionality, lack of infrastructure, ability to maintain the quorum, etc.8
Section 84 of the TM Act 9, requires the tribunal to consist of Chairman, Vice-Chairman, among others and maintain a quorum of two members, one technical and one judicial. It was seen that IPAB was without a Chairman for a total of 1130 days as there was a continuous delay in appointment of the previous Chairman and the new Chairman. This was until the appointment of Justice Manmohan Singh in 2018.10 Another contention is the lack of technical members for the higher posts. The members appointed to the position of Vice – Chairman were seen to possess no prior experience in judicial office and were appointed from the Indian Legal Service (ILS) or the Trade Marks Registry or the Patent Office.11
Such procedure of appointment of members to the IPAB and its functioning have been argued to be unconstitutional since it was seen to be a deviation from the Doctrine of Separation of Powers.12 The Madras HC, in 2015, had even struck down some key provisions of the TM Act holding them unconstitutional.13 Further, the office of IPAB lacked infrastructure and suffered from frequent power cuts which is an irony in itself as the officers protecting the technology and innovation of the masses are themselves working without any viable power backup.14
Despite an incomplete quorum, the IPAB continued to dispose of cases. After the appointment of Justice Manmohan Singh in 2018, the disposal of cases quickened with around 663 cases of trademarks being disposed of by just a two-member bench. The disposal rate of cases of IPAB as of August 2020 rose from 26.7 cases per month to 48.9 cases per month.15 IPAB was quick to adopt a virtual system of hearing pursuant to the COVID -19 pandemic and remained functional throughout ensuring speedy disposal of cases along with saving time, travel and energy. Moreover, the HCs lack 'technical members’ to decide on patent, trademark, copyright, geographical indication and plant variety matters which can result in conflicting decisions by the HCs on the same legal issues rendering inconsistent jurisprudence.
Looking at the above scenarios, the author believes that it is crucial to understand the grounds of such ‘inefficiency’ that forms the basis of the abolishment of the IPAB; Whether the IPAB was judged to be inefficient on the basis of the lack of expertise or due to a lack of civic amenities. This is important because the latter is a result of an absence of infrastructural support by the government and not a shortcoming of the IPAB as a body.
Further, the author argues that the transfer of all cases of IPAB to the HC is completely arbitrary. This is because the concerned five HCs situated in Delhi, Mumbai, Kolkata, Madras and Gujarat are already working around the clock under the sanctioned strength with a huge number of pending cases which is making it more and more difficult to dispose of even monthly filing quickly. Moreover, at a given time, 33 percent of the judicial posts remain vacant in the HC and by transferring the IP cases to the HC, the Executive has further clogged the HC.16
In an interview with India Today, Justice Prabha Sridevan had welcomed the Centre’s move in abolishing the IPAB by saying that the orders passed by the IPAB are not satisfactory and people approach the HC eventually anyway. However, the data is inconsistent with this statement. Out of the 3,793 cases disposed of by the IPAB, only 3% have been appealed and less than 1% have been reversed on such appeals. Further, the judgements of the IPAB have often been upheld by the SC.17 The due credence for this has to be given to the techno-legal knowledge possessed by the authorities deciding the cases which again contradicts the notion that the quorum lacks technical members.
How does the abolishment of IPAB affect India globally?
India’s IP enforcement has always been a concern because of its poor confirmation “of patentability requirements to International Standards and in determining and granting damages upon IP infringement.” Though India’s IP policy has been compliant with the TRIPS agreement, yet it was seen to be weak and ineffective in terms of its global standing. The Indian government’s ‘Make in India’ and ‘Startup India’ initiatives have been trying to boost entrepreneurship in the country.
Further, India attracts a lot of leading IP markets and innovators and it becomes incumbent to have a stronger IP enforcement framework. For this, the trademark registration was started online with a reduction of review period from 13 to 8 months. However, India has shown substantial progress and was ranked at 48 out of 131 economies on the Global Innovation Index in 2020. Nonetheless, the abolition of IPAB might seem to portray an ineffective IP regulation because of an absence of a special tribunal or court with experts to handle IP related matters. This can potentially discourage international businesses having interest in India who might want to withdraw their business because of an ineffective IP regulation, thereby portraying a negative front globally.
The way forward: A Separate IP Court?
With the coming of the digital age and enhancing technology, India needs a separate IP Court. The IP court must be such that it caters to all areas of IP laws, patents, designs, etc. This will ensure a court that is adequately staffed with proper resources and technical expertise of its members and thus, will help to improve the quality and speediness of justice.
In Poland, the draft bill submitted by the Minister of Justice to amend the Code of Civil Procedure aims to introduce a distinct procedure for IP related matters. By fostering special procedural rules, we can see to it that all IP disputes are tailored to the specific institution. However, it might come with its own set of disadvantages in terms of increased cost to the litigants or court being vulnerable to political or economic influences.
For the very prime reasons which rendered IPAB dysfunctional, we encounter similar problems with respect to the HCs as well. If the intention of the Government is to scrap IPAB and transfer the matters to HC and Commercial Courts, then preliminarily the HCs and the Commercial courts should be strengthened infrastructurally. This is crucial to prepare them to handle those matters effectively prior to scrapping the IPAB.
It is noteworthy that the procedure before the IPAB was comparatively easier, cheaper and less cumbersome than the HCs. Hence, the abolishment of IPAB will not only result in further backlog of cases, but also leave the aggrieved parties hanging by further increasing the expense of litigation. Though it is indisputable that IPAB suffered from lack of infrastructure and incomplete quorum, these could have been easily mitigated by investing in adequate resources to strengthen the institution and improving its efficiency instead of abandoning it altogether.
The views expressed above are solely of the author's.
Sources:
[1] Pravin Anand, “Abolishing IPAB: An own goal?” (Indian Business Law Journal, 21 April 2021) < https://law.asia/abolishing-ipab-own-goal/> Accessed 6 July 2021
[2] Karry Lai, 'IPAB Back in Business (Almost)' 275 Managing Intellectual Property 10 (2018) < https://heinonline.org/HOL/LandingPage?handle=hein.journals/manintpr275&div=9&id=&page= > accessed 6 July 2021
[3] Vibhuti Kaushik, ‘Abolishment Of IPAB: Changes To The IP Regime’ < https://www.mondaq.com/india/trademark/1074448/abolishment-of-ipab-changes-to-the-ip-regime > accessed 6 July 2021
[4] Ibid
[5] Ibid
[6I] bid
[7] Ibid
[8] Supra note 2
[9] Section 84, Trade Marks Act, 1999
[10] Prashant Reddy, “The Case for Shutting Down the Intellectual Property Appellate Board (IPAB)”, (Spicy IP, 15 April 2020) < https://spicyip.com/2020/04/the-case-for-shutting-down-the-intellectual-property-appellate-board-ipab.html > accessed 6 July 2021
[11] Ibid
[12] Ibid
[13] L.Gopika Murthy, “IPAB Constitutionality: Revised order vis-a-vis Patents Act”, (Spicy IP, 28 April, 2015) < https://spicyip.com/2015/04/ipab-constitutionality-revised-order-vis-a-vis-patents-act.html > accessed 6 July 2021
[14] Feroz Ali & Rohan Joshi “An Obituary for the IP Appellate Board” The Hindu (19 April, 2021) < https://epaper.thehindu.com/Home/ShareArticle?OrgId=GUI8GDPNI.1&imageview=0> accessed July 4, 2021
[15] Supra note 1
[16] Nalini Sharma, “Scrapping of the IP tribunal: The good, the bad and the ugly” India Today, (12 April 2021) < https://www.indiatoday.in/india/story/scrapping-of-the-ip-tribunal-the-good-the-bad-and-the-ugly-1790112-2021-04-12 > accessed July 4, 2021
[17] Supra note 1
