Experts have found faults with the Centre’s recent move to abolish the Intellectual Property Appellate Board (IPAB) through an ordinance.
On April 4, 2021, the Centre through its Tribunals Reforms (Rationalization and Conditional Services) Ordinance, 2021, abolished IPAB. The plan to abolish various tribunals was in the pipeline for a year.
The IPAB, though originally formed under Trade Marks Act 1999, was notified only in 2003. The board’s responsibility is to hear appeals against the trademark registry and rectification. It was due to Murasoli Maran, a senior DMK leader and former Union minister of commerce and industry, that the board was set up at Teynampet in Chennai.
Sources say the government scrapped the IPAB due to its redundancy. Some point out its poor performance.
Absence of technical member
“The intellectual property field is a technical one. So you need a technical expert. A regular judge may not have knowledge of the field. But for the last few years, the IPAB worked without a technical member. It was the Central government’s responsibility to make proper appointments. Why did it not appoint a technical member?” asked a professor from the intellectual property rights department of a legal institution, who requested anonymity.
With the board’s abolition, the powers are moved to the commercial court of the Madras High Court. Hereafter, the cases are to be handled by a single judge who is from a law background. It is doubtful whether justice would be available in a proper way, she said.
“For example, if there are any claims from pharmaceutical companies, a regular judge who lacks knowledge of chemistry would not know the properties of the medicine. A person may come up with a new invention of an unknown use of the already patented product. How would then a judge decide whether a new invention can be given a patent or it should be rejected? When an advocate, who does not have any science background, cannot become a patent agent, how can a regular judge decide on these matters? A regular judge can decide on copyrights and trademarks, but claims and specifications on patents should be examined by a subject expert,” said the professor.
She said the infrastructure in the High Court must be improved and sufficient personnel appointed. If not, the burden for the High Court will only increase, she said.
Implications on GI tag
It is the board that heard appeals related to Geographical Indication (GI) tag. At a time when Tamil Nadu has GI tags for 20 products and more are in the line, would the abolition of the IPAB have any implications on GI tag claims?
“It won’t have any implication,” says P Sanjai Gandhi, an expert on GI tags. “If a product was not given a GI tag at the Chennai-based GI registry, one could have approached the IPAB. Now, they should go to the High Court. As far as Tamil Nadu is concerned, all the products sent for the GI tag were given the tag without any problem,” he said.
It should be noted that only for the basmati rice variety Madhya Pradesh had gone in appeal asking for inclusion in the seven states’ league with the GI tag. The case was heard by the IPAB and it was ordered that MP should not be included in the league. The case was later dismissed by the Madras High Court.
“When an application for getting a copyright or trademark or patent is rejected by the registry concerned, one can approach the IPAB. Some directly approach high courts. While enacting the IPAB rules, it should have been recommended that such appeals can be taken straight to the Supreme Court and not a high court. But now, the appeals are taken to a high court and if the order is not satisfactory, a petitioner can then appeal in the Supreme Court,” says Gandhi.
“The existence of IPAB reduced one round of litigation (without having to go to the high court),” Gandhi added.
Moreover, the Commercial Court Act that was brought in 2015 has made the IPAB redundant.
Gandhi, who is also the president of IPR Attorney Association, says the government’s move of abolishing the IPAB is unnecessary. “The government could have abolished the board in 2015. But closing now, at a time when the state is witnessing a distortion of its rights and pride, and just because it was brought by a DMK minister, is wrong,” he said.
‘A welcome move’
While welcoming the scrapping of IPAB, Justice Prabha Sridevan, who served as the board chairperson between 2011 and 2013, said that you don’t need to be a chemistry expert or a molecular biology expert. Her opinion is contained in her article published in February 2021 in SpicyIP, a repository of intellectual property and innovation law/policy.
“The new normal requires a constitutional vision regarding access to health and life. We are dealing with the right to life, please! Random doling out of interim and other orders makes me petrified today more than before. Moreover the IPAB cannot mould the relief as a constitutional court can. The presence of public interest in every IP case requires a jurisdictional space that is not constrained,” she said.
She also warns that the tribunals will be “over-stepping” their limits if they try innovative ways since most IP disputes contain public interest, particularly in cases where pharmaceutical companies are involved.
Suggesting that high courts have a separate IP bench to look after the IPR cases, Sridevan says the experts should be appointed by courts.
“The government can save all the money that is spent on the infrastructure — inadequate though it is — and the salary paid to the chairman, members and staff. We have had tax benches in every court and they are given different case numbers. So an IP bench will not be a novelty. IP cases can have separate numbers and go on a separate track.
“The composition of the IP bench must not be changed too often. There could be a panel of expert advisors for every area of expertise applicable (patents, GI, plant varieties etc.) from whom the court can get the expert insight to help them decide the dispute. There could be party experts and court-appointed experts to rule out bias. Time lines can be fixed to ensure quick disposal,” she said.