India: Delhi High Court Directed IPAB To Hear And Dispose Of Urgent Matters

Last Updated: 17 July 2019
Article by Abhai Pandey and Mahima Madan

The Intellectual Property Appellate Board (IPAB) was formed in 2003 under the provisions of the Trademarks Act, 1999 to expedite the disposal of trademark appeals and rectification/cancellation cases by an expert tribunal. Subsequently, the jurisdiction of IPAB was extended to the appeals and revocation actions related to patents, copyright, geographical indications and plant variety cases. To hear matters under respective IP laws, the Bench of the IPAB comprises of the Chairperson and a Technical Member having expertise under the respective laws/subject matter. The qualifications of the Technical Members are also prescribed under the respective IP laws. In 2007, the first Technical Member for patent cases was appointed and sitting with the then Chairperson of the IPAB, the Coram was constituted to hear patent appeals and revocation actions. The IPAB continued to hear patent appeals and revocation actions until May 4, 2016 when the then technical member of the Board retired. The Government could not fill up that vacancy and as a result, the functioning of the IPAB had been halted since May, 2016 till date. The same is the position of trademark and copyright cases. The IPAB is non-functional for trademark cases since December 5, 2018 and for copyright cases, it is yet to start. As on date, the IPAB is functional only in respect of plant variety cases and over 2626 trademarks cases, 617 patents cases, 691 copyrights cases and 1 geographical indication case are pending at the Board thereby, defeating the very purpose of its formation.   

This issue had been raised by the IP fraternity and other stakeholders at various forums from time to time and the order dated July 8, 2019 of the Delhi High Court passed in Writ Petition No. W.P. (C) 5571/2019 filed by Mylan Laboratories Limited (the Petitioner herein) seems to have brought in some respite to the current position. The Delhi High Court in the said order held that the Chairman, IPAB and the current Technical Member for Plant Varieties cases are competent to form the Coram and to hear the urgent matters pertaining to Patents, Trade Marks and Copyright till the vacancies of the required Technical Members are filled in. The Court directed the Board to take up the stay application of the Petitioner for hearing and decide the same within a period of six weeks.

The Petitioner in the said writ petition challenged the order passed by the Deputy Controller of Patents and Designs on March 14, 2019 wherein the pre- grant opposition filed by the Petitioner was dismissed and the patent was granted to the Respondent No. 3. Aggrieved by the said order, the Petitioner filed an appeal before the IPAB on May 17, 2019. Due to non-presence of the Technical Member (Patents) since May 04, 2016, the Petitioner's plea remained unheard and it approached the Hon'ble Court for immediate relief.

The Hon'ble High Court referred to the principle laid down in Election Commission of India v Dr. Subramaninam Swamy, 1996 4 SCC 104 wherein the Supreme Court invoked the doctrine of necessity and observed that if the choice was between allowing a biased person to act or stifle the action altogether, the choice must fall in favor of the former as it is the only way to promote decision making.

The Hon'ble High Court also placed reliance on M/s Kwality Restaurant and Ice Cream Co. v The Commissioner of VAT, Trade and Tax Department, (2012) 194 DLT 195 (DB) wherein it was held that if there were any anomalies in the provisions which tend to undermine the public confidence in the Appellate Tribunal, the same had to be 'shunned and wherever necessary cured'. In light of the facts and circumstances of the case, the Hon'ble Court passed an order abstaining the third Member (Technical) from participating in the appeal proceedings. It further directed the appeal to be disposed of by the Appellate Tribunal comprising of two members who heard it at the first place.

Following the principle laid down in M/s Kwality Restaurant Ice Cream Co. case (supra), the Division bench in the case of Talluri Srinivas v Union of India, Ministry of Corporate Affairs, 2018 SCC OnLine Del 7765 directed the matters to be heard by four members whereas the Chartered Accountants Act, 1947 required the Appellate Authority to be comprised of five members. It was held that the temporary absence or recusal of the member in a particular appeal would not make the Appellate Tribunal dysfunctional till a new member had been appointed as the litigation cannot be non sequitur i.e. there cannot be a litigation system in which it is impossible to litigate a given case.

Lastly, the Hon'ble High Court referred to the case of Bharat Bijlee Limited v Commisioner of Trades and Taxes, (2016) 231 DLT (CN) 2 (DB), wherein the same principle was followed and the Division Bench relying on M/s Kwality Restaurant Ice Cream Co. case (supra), directed the hearing to be conducted by two members instead of three members of Appellate Tribunal under Delhi Value Added Tax Act.

Applying the doctrine of necessity and considering the principles laid down in the aforementioned cases, the Hon'ble Delhi High Court held that the Chairman, IPAB and the Technical Member (Plant Varieties Protection) are competent to hear urgent matters pertaining to Patents, Trade Marks and Copyright till the vacancies of the required Technical Members are filled in and that the orders passed in this regard would not suffer invalidity on the ground of lack of Coram. It was clarified that the Chairman, IPAB is at liberty to take the expert opinion of a scientific advisor from the panel of scientific advisors notified under Section 115 of the Patents Act, 1970. Further, the Hon'ble High Court held that the Chairman, IPAB was to ensure the compliance of these directions to ensure the continuity of the functioning of the IPAB.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions