Article by :Abhai Pandey (Partner) and Mahima Madan (Associate)
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 broughtin 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 casesare 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 Petitionerfor 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 unheardand 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. SubramaninamSwamy, 1996 4 SCC 104 wherein the Supreme Court invokedthe doctrine of necessityand 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 onM/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 hadto be ‘shunned and wherever necessary cured’. In light ofthe facts and circumstances of the case, the Hon’ble Court passed an orderabstaining 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 appointedas 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 Courtheld 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 inand 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.