In an earlier post, we bemoaned the fact that an unconstitutional IPAB continues to surf the IP wave in India, rendering one IP judgment after another, despite being cocooned in a shell of structural illegality. Unfortunately our writ petition questioning all of us continues to languish at the Madras High Court without progress.
Ammini Karnan vs IPAB
In a vindication of sorts, a Division Bench of the Madras High Court recently agreed with our assessment and opined that the composition of the IPAB (as laid down in the statutory scheme) is unconstitutional. In an order dated March 27, 2013, the Bench comprising Justice Dharma Rao and Justice Aruna Jagadeesan stated that Sections 2(k), 85 and 87 of the Trade Marks Act, 1999 fell foul of the law relating to tribunal appointments laid down by the Supreme Court in Union of India v. R. Gandhi (2010) (popularly called the NCLT case, since it pertained to the National Company Law Tribunal [NCLT]).
However, the Bench declined to offer a final ruling on this aspect, given that the matter was pending in other writs including our writ before the Madras High Court.
The current writ had been filed by Ammini Karnan, a person involved in the business of rice and rice based products in Kerala. Karnan was aggrieved by an order of the IPAB allowing an appeal filed by M/s Nirapara Roller Mills Private Limited for the grant of registration of the mark ‘NIRPALA’. Karnan had earlier successfully opposed the mark before the Registrar claiming prior use of the mark. After the IPABs order reversing the Registrars’ order and granting the registration of the mark to Nirapara Roller Mills, Karnan moved the Madras High Court in a writ petition.
She argued that the composition of the Board was unconstitutional, as both members lacked “judicial” experience. The impugned IPAB order had been delivered on October 6, 2006 by Vice-Chairperson Mr. Z. S. Negi and Technical Member Ms. S. Usha. The Petitioner questioned the vires of the composition as contrary to the law laid down by the Supreme Court in L. Chandrakumar v. Union of India (1997) and prayed for invalidation of Sections 2(k) and 87 of the Trade Marks Act. Unfortunately, the IPAB website does not carry this order. In fact, it does not carry any order delivered in 2006! Any of you accessing the IPAB website will know how incredibly difficult it is to find orders!
Clearly the IPAB website needs a lot of revamping if they are serious about transparency and ensuring that their pronouncements are made easily accessible to the public. Given that India is often touted as an IT super power, this is a shame and the government must immediately make resources available to the IPAB to revamp its shoddy website!
From “Technical” To “Judicial”: Whither Constitutionality?
Back to the composition of the IPAB and a faulty legislative framework for eligibility and appointment. Strangely enough, the statutory scheme enables a “technical” member who may not possess any adequate “judicial” qualification to effectively serve as the Chairman of a high profile tribunal! Here’s how:
i) As per Section 85(3) of the Trademarks Act, only an Indian Legal Service (ILS) Officer or a civil judge can be appointed as a ‘judicial’ member to the IPAB.
ii) As per Section 85(4), only a Joint Registrar or an advocate with relevant IP experience can be appointed as a ‘technical’ member.
iii) As per Section 2(k), the Chairperson and Vice-Chairperson can preside over the Bench as a ‘judicial’ member.
Interestingly, Section 85(2)(a) allows a technical member, upon two years of service, to be elevated as the Vice-Chairperson. Furthermore, the Vice-Chairperson after two years of his or her appointment is eligible to become to Chairperson (as per Section 85(1)(b)).
Net result: a technical member who may not possess any “judicial” qualification gets to serve as the Chairman of the IPAB. And this is not merely a theoretical conjecture, but has played out in practice.
The present Vice-Chairperson, Ms. Usha was initially appointed as a “technical” trademark member to help adjudicate trademark matters. As of December 31, 2010, Ms. Usha had adjudged over 30 patent matters as a ‘judicial’ member. On the other hand, Mr. Negi was a government servant, having served as a Secretary to the Ministry of Law and justice. We are not certain of the extent of IP expertise he possessed prior to coming on board the IPAB as a judicial member. He rose to become Vice-Chairperson and then finally the Chairman! Without having served as a judge or practiced as an advocate, Mr. Negi effectively presided over the IPAB as its top judge!
The statistics below contain decisions delivered by Ms. Usha and Mr. Negi as ‘judicial’ members from 2005 till December 31, 2010:
Shri. S. Chandrashekar & Ms. S. Usha (Vice Chairman): 32 decisions
Shri. S. Chandrashekar & Mr. Z. S. Negi (Chairman): 19 decisions
Shri. Syed Obeidur Rahaman & Mr. Z. S. Negi (Chairman): 136 decisions
Note: The statistics are based on orders available on the IPAB website (which as many of us know is not fool proof, but shoddy in several particulars).
This is in complete defiance to the Supreme Court’s norms in Union of India v. R. Gandhi (NCLT). In paragraph 56(i) of the NCLT decision, the Supreme Court held that only persons who are/were either a High Court judge or had served as a District Judge for at least 5 years or an advocate who had practiced for ten years were eligible to be appointed as “judicial” members.
Despite the Supreme Courts clear guidelines, the Ministry of Commerce and Industry, one of the respondents in the above writ filed by Karnan, contended that the provisions were constitutional and that the composition was not faulty. Although the Division Bench refrained to rule on the matter and declare the relevant provisions of Trade Marks Act as ultra vires, it categorically asserted that:
“The Hon’ble Supreme Court specifically stressed that only if continued judicial independence is assured, Tribunals can discharge judicial functions and that they should resemble courts and not bureaucratic boards and that even the dependence of Tribunals on the sponsoring or parent department for infrastructural facilities or personnel may undermine the independence of the Tribunal.
Therefore, applying the principles laid down in Union of India V. R. Gandhi (cited Supra) the definition for the judicial member under Sec. 2(k) of the Act, has to be reconsidered, otherwise, it will become unconstitutional. Likewise, the qualification of Vice Chairman, Judicial Member and Technical member under Sec. 85 of the Act has also to be reconsidered.”
Our Fervent Plea Again
Given the change of captaincy at the Madras High Court, we plan to urge the court to give serious consideration to our writ filed more than 2.5 years ago and help move it forward so that it is not relegated as a piece of legal relic. In the meantime, we request all those in the IP fraternity, particularly those interested in building a robust IP ecosystem to please petition the powers that be in the government to desist from delaying the matter in court, but to work towards a speedy resolution. Better still if the government simply followed the NLP (National Litigation Policy) ushered in by Shri Veerappa Moily and withdrew the matter, since this is effectively a slam dunk case and the IPAB constitution is in blatant violation of norms propounded by the Supreme Court in the NCLT case.
At the very least, the government ought to provide enough resources to enable a decent functioning of the IPAB. And most importantly, one hopes that with Justice Sridevans’ retirement in another month or so, the chosen successor will be someone as capable, if not better!
All of this is however premised on the assumption that all of us wish the IPAB to continue performing this role as a key IP dispute resolution body. As our SpicyIP poll (still accessible on the left hand side of the home page of the blog) indicates, this may not be true, for there are many of us who are keen to have these functions revert to the High court and are of the view that special benches at the High Court will do a far better job of IP dispute resolution than the IPAB. Even if this is the case, we still need to move and advocate for this. If history is any judge, apathy will not help!
By Sai Vinod and Shamnad Basheer
An equally fervent plea – there is currently one judicial member – J. Prabha Sridevan. I believe she retires in a couple of months. The DIPP appears to be dragging its feet on appointing a new judicial member. What say to J. Sridevan being granted an extension. I am not commenting on the constitutionality or otherwise of the IPAB itself. However, J.Sridevan’s orders have been balanced, and appear to embody the principles enshrined in the TM and Patents Act, while also emphasising the socio-economic principles that underlie these Acts.
Always Anon.
The constitutional status of the IPAB notwithstanding, I do not find Justice Sridevan as competent enough to see through multiple technical disclosure and analyse the patent at hand. I have seen her orders having a subtle hint at “balancing” socio-economic impact of a patent in hand. I feel she undermines technical merit of the invention and overrides it with socio-economic arguments.
As far as her work in bringing forth the issues with IPAB is concerned that certainly is commendable.
If it is held unconstitutional what will happen to all the orders that were passed by IPAB?