Section 95 of the Trade Marks Act, 1999 deals with conditions as to making of interim orders, and it reads as follows:“Notwithstanding anything contained in any other provisions of this Act or in any other law for the time being in force, no interim order (whether by way of injunction or stay or any other manner) shall be made on, or in any proceedings relating to, an appeal unless: […]”
Section 92 (2), TM Act, 1999 : ” (2) The Appellate Board shall have, for the purpose of discharging its functions under this Act, the same powers as are vested in a civil court under the Code of Civil Procedure, 1908 (5 of 1908 ) while trying a suit in respect of the following matters, namely:- (a) receiving evidence; (b) issuing commissions for examination of witnesses; (c) requisitioning any public record; and (d) any other matter which may be prescribed.”
The IPAB held that it has the power to grant interim orders at the application and appeal stage. However, before passing this order it would explore the possibility of deciding the main matter expeditiously. Additionally, no interim orders would be granted without hearing the other party, if the TM or patent has been in force for a considerable period of time that will be a condition against grant of such relief, factors such as prima facie case, balance of convenience and irreparable injury would be kept in mind and the order would only bind the parties and no one else.
Arguments Against Granting Interim Orders
It was argued that Section 92 (2) is only a procedural provision and cannot be stretched to include substantive powers (as held in the Super Cassettes Case). This was in contrast to the National Green Tribunal Act which under Section 19 (4) (i) specifically confers the power to grant interim orders on any application or appeal. Additionally, it was argued that S. 95 and the words ‘any other manner’ must be read ejusdem generis. In this regard, the scheme of Chapter XI showed that though the legislator had specifically provided the power to grant interim reliefs in cases of appeal, no such provision appeared after Section 97 which deals with procedure for rectification. Moreover, the words and phrases ‘in any proceedings relating to an appeal’ indicates specifically that the Appellate Board was authorized only to grant injunction or stay in appeals and not in applications, otherwise these words would be rendered unnecessary. It was also contended that Rule 2 (d) and 2 (f) of IPAB Rules dealt with appeals and applications separately. Therefore the meaning of appeal cannot be construed to include application.
It was submitted that if interim orders are granted in trademark matters, the provision relating to the presumption of validity of registration created under Section 31 of the Act becomes otiose.
On the point of S. 92 allowing the IPAB to grant such orders as may be required to adhere to the principle of natural justice, it was argued that granting interim orders would actually amount to granting final reliefs and would adversely affect the rights of the owner. The owner’s right to sue for infringement, pay renewal fees etc. coupled with the absence of a provision on extension of his patent term due to regulatory delays, would be curtailed to a large extent. Therefore, the IPAB should expedite the hearing of such cases instead of granting interim reliefs.
Applicant’s arguments FOR interim orders and the IPAB’s decision
The applicants cited several cases that had held that every Tribunal should be considered to have ancillary or incidental powers to grant interim reliefs in order to do justice in a case. Moreover, in cases of fraud, precedents showed that Tribunals are inherently clothed with jurisdiction to recall the orders obtained by means of fraud and to grant stay.
Secondly, it was contended that nothing in the language S. 95 excludes the IPAB from granting interim reliefs at the stage of application. This section in addition to providing the power of granting interim orders, regulates the manner of interimreliefs in cases of appeal.
Thirdly, it was submitted that the registration of the Trade Mark itself is not a complete right. Registration under Section 31 only establishes prima facie evidence of validity and therefore, the IPAB (exercising plenary powers under S. 28) hearing the rectification application has the inherent jurisdiction to decide the validity and invalidity.
Fourthly, equity demanded that the IPAB must grant interim measures in order to prevent fraudulent Trade Marks, to avoid confusion and thereby protect public interest.
Fifthly, it was argued that though the dividing line between appeals and applications is very thin, the power to issue reliefs in both cases is the same. Though the IPAB acknowledged the various consequences an interim order could have on the rights of the IP owner, it held that these could not be grounds for stopping the IPAB from granting such orders. Also, in relation to whether granting an interim order would amount to granting final relief, the IPAB held that ordinarily, interim orders that are given pending revocation or a rectification application are not equivalent to granting of main relief.