We bring you a guest post from the prolific Prashant Reddy, who has had to take a break away from regular blogging at SpicyIP since he now heads the judicial reforms team at Vidhi.
Fortunately, we managed to persuade him to pen a guest post on this rather curious decision, where a judge of the Delhi High Court has effectively ruled that an “expert” IP tribunal that lacks the alleged “expertise” can still decide IP disputes.
In his inimitable style, Prashant tells us why this decision is deeply problematic. No holds barred, and he calls a spade a spade! Rather rare these days, where speaking truth to power often results in targeted victimisation!
So without much ado, here you go:
Curiouser and Curiouser: The Delhi High Court Whitewashes an Infirm IPAB and Rules that a Plant Variety is a Patent..and Perhaps Even a Trademark!
Prashant Reddy
“Curiouser and curiouser! Cried Alice”
Alice could well have said this in the wonderland that is Indian IP these days! In a rather strange ruling handed down on Monday, the Delhi High Court permitted the Intellectual Property Appellate Board (IPAB) to adjudicate “urgent matters relating to Patents, Trade Marks and Copyright”, despite the IPAB lacking the statutorily mandated quorum to hear these disputes.
That the IPAB has been mired in one controversy after another is an understatement! A constitutional challenge filed many years ago by Shamnad resulted in a decision that made it abundantly clear that only constitutionally competent members could man the IPAB and decide its various disputes. Unfortunately, till date, such competent personnel have not been appointed!
Currently, the IPAB has only one technical member, appointed under the Plant Varieties Protection & Farmer’s Rights Act to hear matters under that specific legislation. By waving his magic judicial wand however, Justice Midha invests this “technical member” (for Plant Varieties) with the power to adjudicate upon other IP disputes, over which he/she may possess no special expertise whatsoever!
In addition, Justice Midha has cleared the decks for the incumbent chairperson of the IPAB, Justice Manmohan Singh to hear these cases just by himself, should the technical member for plant varieties recuse himself for any reason. According to Justice Midha, the orders that have been passed by Justice Manmohan Singh do not suffer any invalidity on grounds of a lack of quorum. These are stunning directions from the Delhi High Court for reasons that I’ll explain below.
Chequered Innings of the IPAB and Chairman Controversy
Let us first start with some history.
Originally setup to hear only appeals from the Trade Mark Registry, the powers of the IPAB were subsequently expanded to hear a number of patents, copyright and plant variety protection cases. As per Section 84 of the Trade Marks Act, the IPAB requires a quorum of two members, one judicial member and one technical member, the latter being the member appointed for the relevant practice area i.e. patents or trademarks. Thus, for the IPAB to hear a patent case, it is required by Section 84 to have a technical member specifically for patent matters. This was the entire logic of creating the IPAB – to enable “technical expertise” in deciding IP cases. The problem, however, is that the DIPP is struggling to find candidates with the qualifications necessary for the posts of technical members. As a result, the IPAB has been dysfunctional for most of its history and it is no surprise that the IPAB currently has no technical member to hear any disputes outside of one IP area i.e. plant variety protection. In other words, the IPAB lacks technical members to hear either patent or trademark matters.
Over the last year, Justice Manmohan Singh who has been the Chairperson of the IPAB has been passing a number of rather controversial orders while sitting as a single member, despite the law requiring a mandatory two member quorum for the IPAB to function. While most of these orders pertain to withdrawal and settlement of pending cases, it is still problematic, given that these orders effectively put a seal on the rights of the parties. It is thus not too surprising that some lawyers have publicly complained about Justice Manmohan’s conduct in this regard. See previous posts on SpicyIP here, here and here.
Mylan’s Challenge and Justice Midha’s Misreading of the Law
Enter the present writ petition filed by Mylan Laboratories before Justice Midha against an order of the Patent Office denying the company a patent. When tribunals are non-functional, it is completely legal to approach the writ jurisdiction of the High Courts for substantive relief on merits. Instead of hearing Mylan’s petition on merits and passing an order (which high courts are well within their power to do), Justice Midha passes this rather strange order.
Apart from giving Justice Manmohan Singh a carte blanche to hear all future matters by himself, Justice Midha has also effectively whitewashed all the previous controversial orders given by Justice Manmohan Singh while he was sitting as a single bench without having a technical member on board, as required by Section 84. In paragraph 35, Justice Midha states that:
“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.”
So lets get this clear. The IPAB is allegedly formed to enable some level of “technical” expertise in IP adjudication. And yet the IPAB now decides without such “technical” expertise! As Justice Holmes once said: the life of the law is clearly not logic!
The precedents that Justice Midha cites to justify his questionable order are 4 judgments which he has cherrypicked to select specific quotations despite it being amply clear that all 4 cases can be easily distinguished on simple facts. Two of the precedents that he cites pertain to the Delhi VAT (DVAT) Act. However, a look at the orders (2nd para of the order has the text of the statute) makes it expressly clear that the tribunal mentioned in the DVAT Act requires a minimum quorum of only 1 member which means that these precedents did not deal with the issue of inadequate quorum. This eliminates two of the precedents cited by Justice Midha to claim that orders passed without quorum will continue to be valid. The other two precedents he cites pertain to the Election Commission’s quasi-judicial powers and the CA Act. Neither of these cases deal with the quorum of tribunals exercising judicial powers and are irrelevant to the facts of this case.
On the other hand, there is considerable case law where courts have come down heavily against violation of the quorum requirements of tribunals as specified by Parliament. For example, recently, the Government of India passed a notification allowing the National Green Tribunal to hear cases in single benches. The Supreme Court had to intervene to stay the notification and reiterate the position that these benches had a quorum requirement of 2 members.
In context of the IPAB specifically, the same issue cropped up twelve years ago in the Novartis case. The IPAB lacked the required quorum, given that Mr. Chandrasekharan, the only technical member then (for patents) was conflicted out. The government and the Madras High Court then struck a deal to permit the Chairperson and Vice Chairperson of the IPAB to hear the Novartis appeal without a technical member. Shamnad had pointed out that this was illegal way back in 2007. When Novartis appealed to the Supreme Court, the court refused to allow the matter to proceed without a technical member and appointed an ad-hoc technical member to the IPAB in order to comply with the quorum requirements of Section 84. Strangely enough, Justice Midha’s order cites to this Supreme Court order from 2007, but makes no mention of the logical conclusion that flows from this order.
More Judicial Excess?
I’ve saved the worst for the last. In the next hearing, Justice Midha is going to decide on a proposal put forth by the petitioner’s counsel as well as the amicus, that Justice Manmohan Singh be allowed to continue beyond his retirement date in September, 2019 until the DIPP appoints a new chairperson to the IPAB. In other words, Justice Midha, a one-time colleague of Justice Manmohan Singh from the Delhi High Court is going to consider whether the latter can hear cases beyond his retirement date.
As a final note, let me mention that the extent to which this order has gone to whitewash orders of the IPAB passed by Justice Manmohan Singh without adequate quorum, only goes to establish that young Mr. Rishab Mohnot (a SpicyIP student fellow) was bang on the point when he concluded that Justice Manmohan Singh should not have passed the orders in question without the required quorum.
The right thing to have done was for the HC to hear the case on merits, and perhaps, passed an order stating that until the coram issues of the IPAB are fixed, the job of the IPAB will be done by the various HCs within whose jurisdiction the trademark arises.
Ideally, all Tribunals should be banned. But well, who are we kidding.
IPAB is not properly functioning for the last few years. Worryingly we are not even able to check the status of the matters filed before IPAB online, as the website http://www.ipabindia.org appears to have been transferred and no official website for IPAB is available now.
IPAB is not functioning for years but for last few months, rather for last few months the IPAB working systematically brought to brink. The top officials of IPAB are involved in bringing the IPAB working to shambles the website was brought down, earlier we could obtain certified orders from website but now leave orders even we cannot see case cause list.
The cause lists are usually pinned on the door of the court n simply every counsel is called day in advance by the registry that your matter is listed tomorrow. Some of the orders are signed by the Deputy Registrar / court officer who are not authorise to sign it and now a days they are signing the daily orders as like members on the order sheets.
The chairman though having an additional charge is working like full time chairman from Delhi. I have heard from lawyers in high court corridor that purpose of closing the website was that cause list should not be available for all advocate so they are not able to see whose cases are listed so to kill transparency the website was closed.
As per trade mark or copyrights act the minimum qualifications of the member is 10 year practice in trademark law but the court ordered the person who has not seen court, leave law education LLB will hear the cases and as member on the seat of the adjudication with chairman, after seeing the order I feel former Mr Obaidur Rehman was at least lawyer his credentials are far much better than him but I do not know do much hue n cry was raised by everyone why there is no voice of dissent today where are those voices all have muzzled by their greed now they are ready to accept the member who is not even a law graduates leave IP law experience because it suits everyone so no hue n cry. The justice SK Kaul judgement of 2015 clearly says that a member who is not law graduate can not pen the judgement or order too. Whereas as per that judgement than this PVRA member can not sit for TM matters he is not qualified as per section 84 (3) of trademarks Act luckily the hon’ble judge has not abrogated the section realtor TMmember qualification so I am of the view the minimum qualifications stand as it is as such the member is not qualified to hear trademark matters.
so the court has allowed the person to adjudicate the cases without having abrogating the law and Ip experience god bless India third pillar is also crumbling on its own you do not need enemies to make it crumble but it is falling on its own. The way courts are handling matters showing credibility loss.
The stalwarts of IP are sitting as mute spectators in appeasing the other side they are ready to argue before any one till they are paid there quoted fee than they are ready to argue their case before who ever person is sitting other side they are paid for bowing down, ethics n inter gritty has taken back seat. If this present scenario who to blame the society is to be blamed. Where prime motto for is “ you scratch my back n I will scratch yours”
Other interesting thing firstly this member has joined on deputation from ICAR it is foremost necessity is that the person has to resigned from his parent cadre to join as member all members from CGPTDM office have been doing so in this case as tribunal is being independent body this member cannot sir as a member here as tribunal is autonomous body you can not be part of the government, every advocate must be aware that Smt Prabha Sridevan never accepted CGPTDM Office’s as Registry as she felt when the government is a litigant IPAB cannot have office there so how can this member can have lien service I. The government.
Secondly the selection of this member selection was not carried out as per constitution bench judgement from SAMPATH KUMAR to NCLT judgements as there was no judge was present in selection or chairman of that selection committee of the member PVRA on this count alone this member cannot sit and adjudicate IP matters in the IPAB
Thirdly this member appointment is not yet notified by the government as per section 54 of the PVRAAct as that plant variety tribunal is not yet notified when tribunal is not notified by the government his appointment as member is still under limbo hence this member cannot sit as member of the IPAB tribunal to hear I P matters.
This member appointment is not in consonance to the trademarks, Patent, copyrights Act than how can this member can sit and adjudicate judicial matters. It is equally surprising Ip fraternity has lost an golden opportunity to bring IPAB system in proper form but due to own petty greeds whole IPAB has gone to brink and history will remover today mute generation of lawyers who knowingly sat on fences and watching crumbling state of IPAB due to IP frater mutt now IPAB has now became IPAB private limited where certain individuals are going to have hey days !!!!! Long live Ip fraternity
Spicy Ip- to make the post more wholesome and spicier- please examine if Mylan has right of appeal against the order dismissing its pre-grant opposition. The judgement records that Mylan filed an appeal against the order at the IPAB , then approached the Court as IPAB was not functional. Mylan as an interested party could only have filed a fresh action by way of a post grant opposition or a revocation action and not certainly an immediate appeal against the order to the IPAB as per ratio laid down in the UCB Farchim case by Jutstice Muraldihar in 2010. However, this law point appears to have got lost in the frenzy to make the IPAB functional and the Court may have got misled unwittingly.
Breaking- hundreds of matters including for Copyrights have been schedule for hearing this Friday at Mumbai by the new bench!
Now all are urgent matters, matters may not be urgent for clients but these all matters are urgent for chairman as he wants to leave no work for others chairman for years to come, as he has now expert IP law Technical member with him on his right side, this Technical Member has all expertise of IP matters doing only legal cases in ICAR.
In my view the doctrine of necessity the present chairman be permanently made chairman for whole life and along with present expert technical member. Therefore no need to appoint new Technical Member or other chairman/ members
The Chairman is mostlikely to get an extention untill the new chairman is appointed. Justice. Midha suggested that it is well within the court’s power to pass a judicial order to extend the chairman’s tenure. However, the matter is posted on 18th of september( which is 3 days before the chairman’s retirement date).