The IPAB (Intellectual Property Appellate Board) recently held hearings for trademark matters in July 2019. The cause list was sent on a rather short notice, and came as a surprise to many advocates since the IPAB currently doesn’t have a technical member for trademarks, and therefore should not be hearing trademark matters under the law. We’ll be taking a look at this in closer detail in this post.

As for a context, the IPAB is a quasi-judicial body which was set up to address issues of intellectual property, ostensibly to streamline the legal process, improve efficiency, and provide quicker avenues to justice for litigants involved in IP matters. An analysis of the IPAB’s performance over the last couple of years however, shows that the tribunal has failed to deliver on any of these fronts. Suits filed before the IPAB often take years before substantive hearings are listed, and the tribunal itself has failed to maintain the appropriate quorum mandated under the law to deliver competent judgements.

For context, the IPAB was originally set up to decide on appeals from the Trade Mark Registry. Its scope was later expanded to include patents, copyrights, and plant variety protection matters. Under the Trade Marks Act (which establishes the body), the IPAB must consist of at least 2 members – a judicial member and a technical member. The technical member is discipline-specific i.e. for trademarks/patents/copyrights/plant varieties, which makes sense in light of the fact that the entire reason for setting up the IPAB was to be able to ensure “expertise” in disposing of IP matters. However, for a multitude of reasons, the government has been unable to find suitable candidates (i.e. appropriately qualified persons) to be appointed as technical members to dispose of the specific matters that come up before the IPAB. At this juncture, the IPAB only has a technical member for plant variety protection matters – meaning that it is not eligible to hear trademark or patent matters.

In a bizarre ruling from a couple of weeks ago, the Delhi High Court in Mylan Laboratories Limited vs Union Of India & Ors has directed the IPAB to dispose of “urgent matters relating to Patents, Trade Marks and Copyright”, despite the lack of the statutorily-mandated quorum to do so. In the present case, a writ was filed by the petitioner against an order of the Deputy Controller of Patents and Designs whereby the Controller dismissed the pre-grant opposition filed by the petitioner and granted the patent to one of the respondents. Now considering that the IPAB (which is meant to handle these matters) is not eligible to handle it at this point due to a lack of quorum, the petitioner is well within its rights to have approached the High Court. The Court had directed the IPAB to submit a report on the status of vacancies for technical members at the IPAB. Some of the things that immediately jumped out were:

  1. The IPAB has not heard even a single case pertaining to copyrights, since its inception in 2003, due to the sheer failure of the Government in appointing a Technical Member for copyrights.
  2. The post of the Vice-Chairman of the IPAB lay vacant for a total of almost 7 years and is currently vacant since the last 5 years. The post of Technical Member for Trade Marks has been lying vacant for the last 6 months.
  3. The post of Technical Member for Patents has been lying vacant for the last more than 2 years. As a result, no effective hearing of the appeals relating to Patents has taken place since the last 2 years.

While Justice Midha (who heard the matter) rightly surmised that the IPAB has failed in its mandate to improve access to and the efficiency of IP dispute resolution, his order in the present judgement appears to suffer from a lack of consistency. At paragraph 35, he holds “the doctrine of necessity has to be invoked in the present case. The legislative intent is of the continuity of IPAB and not its cessation because of a vacancy in its technical membership. If the post of the Technical Member is lying vacant, IPAB can proceed to hear the urgent matters and the orders passed would not suffer invalidity on the ground of lack of Coram.” This does not appear to make any sense, as the apparent motive for establishing the IPAB (i.e. technical expertise) is obviously not satisfied if a suitable technical member is not part of the bench that is constituted to dispose of the matter in question.

Justice Midha’s reasoning to arrive at this order does not survive much scrutiny. Two of the orders cited do not deal with the issue of inadequate quorum, and hence should not be applicable. The other two do not address the issue of exercise of judicial powers by a tribunal and also do not appear germane to the present issue. On the contrary, it is a well-settled position of law that a statutory requirement for quorum cannot be arbitrarily disregarded.

With the IPAB itself, this issue has arisen in the past as well. In the matter of Natco Pharma Limited v. Union of India, S.L.P.(C) Nos.1323- 1337/2008, there was no Technical Member in the Intellectual Property Appellant Board (IPAB). The Supreme Court had to intervene to appoint an ad-hoc member to ensure that the matter met the quorum requirements before it could be disposed of. Justice Midha even cites this order, and yet arrives at the opposite conclusion of what the logical endpoint of this order is.

From a practical perspective, most (if not all) matters listed for the July hearing date were adjourned to December. This only serves to add to the puzzling nature of the entire proceeding, as there does not appear to have been any benefit derived from the Delhi High Court’s order to hold these hearings without the appropriate quorum. From a litigant’s perspective, unnecessary legal fees are incurred when lawyers have to be instructed to attend an unnecessary hearing. The handling of this entire matter in such a bizarre fashion certainly does not help the credibility of the IPAB or the judiciary, when statute and established precedent are disposed of arbitrarily.

Summary