Intellectual Property Appellate Board Abolished

On April 4, 2021, the President of India, promulgated the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 (‘Ordinance’), inter alia, abolishing the Intellectual Property Appellate Board by amending the Copyright Act, 1957, the Patents Act, 1970 the Trade Marks Act, 1999, Geographical Indication of Goods Act, 2000, and the Protection of Plant Varieties and Farmers’ Rights Act, 2001. Some of the changes relating to the key intellectual property legislations are discussed below.

Trademarks

i.    Rectification proceedings under the relevant provisions of the Trade Marks Act, 1999 (‘Trade Marks Act’) can now be filed before the appropriate High Court having jurisdiction, in addition to the Registrar of Trade Marks.

ii.    Appeals from orders of the Registrar of Trade Marks will now lie with the appropriate High Court (depending on the jurisdiction of the Registrar passing the orders), and must be filed within 3 months from the date on which the order was communicated to the appellant. In relation to such proceedings, the term ‘prescribed’ has been expanded to include rules made by the High Court, in addition to the rules made under the Trade Marks Act.

iii.   Further, powers such as (not limited to) imposing limitation on color, distinctiveness of a trademark, security for the costs of proceedings relating to oppositions / appeals, determination of whether use of a registered associated trademark is equivalent to the use of another registered mark, direction to the Registrar to rectify entries in the register, now lie with the High Court.

 Copyright

i.     All appeals from the decisions of the Registrar of Copyright, as well as applications for rectification of the Copyright register shall now lie with the High Court. Since the Copyright Office (from where the Registrar operates) is only in Delhi, it appears that only the High Court of Delhi may have jurisdiction over such appeals and rectification proceedings.

ii.   Appeals must be filed within 3 months from the date of the order. For the purposes of calculating this period, the time taken in granting a certified copy of the order or recording the decision will be excluded.

iii.   These appeals will be heard by a single Judge of the High Court and if the single Judge deems fit, the appeal may be referred to a Bench of the High Court at any stage. A further appeal from the order of a single Judge may be filed with a Bench of the High Court, within 3 months from the date of such order.

iv.   Certain disputes to be decided by the Intellectual Property Appellate Board (‘IPAB’), such as those relating to assignment of copyrights or compulsory/statutory licenses (for works withheld from the public, or unpublished and published works, for cover versions, certain broadcasts, etc.), or those in relation to whether a work has been published, date of publication of a work, whether term of copyright in India is longer than the term for such work in any other country, will now lie with appropriate Commercial Courts (i.e. a Commercial Court or the Commercial Division of a High Court under the Commercial Courts Act, 2015). Unlike the amendments for trademarks, it appears that certain types of copyrights related actions can only be instituted before Commercial Courts. It is currently unclear from the Ordinance, how jurisdiction for disputes / applications under the Copyright Act, 1957 will be ascertained.

Patents

All provisions in relation to appeals to the IPAB, under the Patents Act, 1970 (‘Patents Act’) have been completely omitted and all appeals from the decision/order/direction of the Controller of Patents will now lie with the High Court. A rectification or revocation action under the relevant provisions of the Patents Act would now have to be filed before the appropriate High Court.

Transitional Provisions

The Ordinance stipulates certain transitional provisions which prescribe that matters pending before the IPAB, prior to the Ordinance, will stand transferred to the relevant High Court, in the same manner as they would have been filed, had this Ordinance been in force on the date of filing. Further, the appropriate High Court may proceed to deal with cases from the stage at which they stood before such transfer, or from any earlier stage, or de novo, as it deems fit. This means that irrespective of the stage of the pending matter, the High Court having jurisdiction may, at its discretion, require the appellant / petitioner, to commence such matters afresh.

Way Forward

The Ordinance has been issued despite numerous representations from stakeholders to keep the IPAB operational. Reports suggest that the primary reason for the Ordinance was the IPAB’s slow justice delivery despite the huge burden on the public exchequer. However, it is unclear whether High Courts, with their existing backlog, and absence of technical members (especially in the case of patent appeals and revocations), will be able to shoulder the weight carried by the IPAB for the past 18 years. The result of this shift is that the matters pending before the IPAB for past several years are likely to get further delayed and no hearings are likely to be scheduled in the next 6 months to a year in the least. It also remains to be seen how jurisdiction issues, and procedural issues surrounding transfer of the large volume of existing cases from the IPAB to the relevant High Courts, will be dealt with by the Government.

Date: April 9, 2021