Copyright Patent Trademark

DIPP Appoints ‘Technical Members’ to IPAB – Legality under Doubt


Last night, Anushree Rauta of the IPRMENTLAW blog, made public an order of the Appointment Committee of the Cabinet (ACC) clearing the decks for the appointment of five technical members to the Intellectual Property Appellate Board (IPAB). The order is dated July 21, 2020. Of the five members, Joint Controller B.P. Singh has been appointed as Technical Member for Patents; Advocates Lakshmidevi Somanath and Vijaykumar have been selected for the posts of Technical Members for Trademarks and Advocates N. Surya Senthil and S. P. Chockalingam have been appointed as Technical Members for Copyright. After the clearance of the ACC, the selected members have to go through the process of medical tests and police verification before a warrant of appointment can be issued by the President.

I suspect these appointments may not be legal because they appear to have been made under the old tribunal rules rather than the new rules notified in January, 2020. I cannot confirm this but I will try to get more information in this regard. In the meantime, let me provide some background about the litigation regarding the tribunal rules. In 2017, with the enactment of the Finance Act, 2017 the government amended the Trade Marks Act, Patents Act and Copyright Act to fundamentally restructure the IPAB along with a whole other bunch of tribunals. The new framework for appointments to the IPAB was laid down in the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017. Last year, in November, a constitutional bench of the Supreme Court struck down the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 as unconstitutional in the Roger Mathew case. Within a few months in January, 2020 the Ministry of Finance notified the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020. The qualification criteria and the composition of the selection committee in the 2020 rules are different from the 2017 rules.

The question now is whether the appointments in the DoPT order were made under the 2017 Rules or the 2020 Rules. If these appointments were made under the old rules, they will be struck down in a court of law. I suspect (but cannot confirm) that these appointments have been made under the 2017 rules because the only advertisement for technical members for the IPAB on the DIPP’s website is dated July 25, 2018.  Further the first line of the DoPT’s order (image above) refers to the DIPP’s office memo dated November 25, 2019 i.e. prior to the notification of the 2020 Rules in January of this year. If my guess is correct, the 5 technical members have been appointed under the older 2017 rules which have been struck down as unconstitutional. If these appointments were made under the 2020 Rules, a new advertisement for the posts should have been published on the DIPP’s jobs website post January, 2020 to start a new recruitment cycle – which it is not. It is therefore very likely that these appointments are illegal under the law.

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Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

10 comments.

  1. AvatarAnonymous

    But, isn’t the compliance of 2020 rules, specifically written in the notification? So does the time of release of advertisement matter? I mean wouldn’t the advertisement subsist inspite of change in rules? The period to apply doesn’t restrict until 2019, and could be post the notification of new rules too. So why can’t the advertisement be applicable? The rules are in public domain, so everyone applying or who has applied knows of them and can retract if they want to. How does the advertisement or the OM date matter?

    Reply
    1. Prashant ReddyPrashant Reddy Post author

      The qualification requirements under the new rules are different from the old rules. Besides how can the govt. appoint persons under a set of rules that were struck down as illegal by the Supreme Court?

      regards,
      Prashant

      Reply
      1. AvatarRohan Rohatgi

        Prashant, the notification clearly states that the pay and other terms and conditions would be as per the 2020 Rules. I understand that you are referring to the notification dated 25.11.2019 which was post the Roger Mathew judgement, however, pre-the notification of the 2020 Rules. My take on this is that after receipt of the applications from the prospective candidates and the notification of the 2020 Rules, the DPIIT would have shortlisted the candidates based on the requirements / qualifications of the 2020 Rules, and then put the same before the ACC. As the ACC has now approved the appointment, it seems to be that these appointments are under and subject to 2020 Rules. Therefore, the notion of them being under the 2017 Rules seems to be misplaced.

        Reply
        1. Prashant ReddyPrashant Reddy Post author

          If you can show me an advertisement of the posts under the 2020 rules I would be glad to buy your argument. But if the posts were not advertised under the 2020 rules, the appointments go out of the window.

          Regards,
          Prashant

          Reply
  2. Avatarvidyut agarwal

    I have read your article with much interest, as you might be aware that in service law jurisprudence the laws or rules cannot be implemented retrospectively and I feel the most of the IPR lawyer may not be aware of service law jurisprudence.

    The applications for various member posts were invited in somewhere in July 2018 by the DIPP, before that in the matter of kudrat Singh Sandhu Vs UOI. The Supreme Court has granted the stay of the operation of the 2017 notification, as such the DIPP was bound to invite application for members posts only as per the qualifications and terms enumerated under Trademarks Act of 1999. Further the whole process of constitution of selection committee and the selection committee had carried out the selection process of selection of various Members was completed on 21st of August 2019 and the same was forwarded to ACC on time, by the time on 13 November 2019 under the terms of the advertisement of July 2018.

    Finally that notified rules of Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2017 were struck down by the constitution bench as unconstitutional by the Supreme Court in the case Rojer Mathew vs. South Indian Bank and ors on 13th of November 2019.

    What I have understood the issue after reading your post is that whether the appointment of the members can be carried out in New Rules of 2020 or in the old rules of 2017, if you read the advertisement, it has invited application under trademarks Act 1999 and not under tribunal Rules of 2017 rules because by the time the advertisement was brought in the said rules were already stayed by the Supreme Court in February 2018 in the Kudrat Singh Sandhu matter, so the question of Appointment under 2017 Rules does not arise.

    As this DIPP advertisement was appeared in the month of July 2018 inviting application for various members posts having the terms and service conditions as prescribed under TM Act of 1999 and whole process of selection process was completed before finally deciding of the matter Rojer Mathew vs. South Indian Bank and ors and notification of Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020, which were notified on 12th of February 2019n does not affect the selection of the members in any member but the problem arise of the different nature is that the whole appointment may go in to limbo.

    The issue arise here is that when the DIPP has carried out and completed selection process under TM act of 1999 and further before the issuance of notification of the Tribunal, Appellate Tribunal and other Authorities (Qualifications, Experience and other Conditions of Service of Members) Rules, 2020, then how can DIPP can apply this new rules retrospectively and appoint these members selected under terms and service conditions enumerated in TM Act of 1999 way back in August 2019 by invoking their appointment under new notified rules which were published only in February 20120. Hence in my view the appointment of all the members is contrary to laws and precedents, the new rules can not be invoked after completion of selection process under TM Act 1999 as such this appointment as member is contrary to laws, the reasoning in relation the appoint is explained as under in detail;

    The said advertisement of 2018 had invited applications for various posts as per TM act 1999 like for trademark member the advertisement referred the eligibility condition as per section 85 (4) of the Trademarks act 1999 as under:
    (4) A person shall not be qualified for appointment as a Technical Member, unless he or
    (b) has, for at least ten years, been an advocate of a proven specialized experience in trade mark law.

    The application received from the advocates for TM member posts is as specified 10 year has, for at least ten years, been an advocate of a proven specialized experience in trade mark law.

    But the new notified New Delhi, the 12th February, 2020 vide G.S.R. 109(E).—At column 12 of eligibility conditions it says (4) A person shall not be qualified for appointment as Technical Member (Trademark), unless he, –

    (a) has, for ten years, exercised functions of a Tribunal under the Trade Marks Act, 1999 (47 of 1999)
    and has held a post not lower than the post of Registrar for five years and has a degree in law with twelve years of practice at bar or twelve years‘ experience in a State Judicial Service, or
    (b) has, for twenty-five years, been an advocate of a proven specialized experience in trade mark law.

    1. As per my knowledge, no selected candidate for Trademark or Copyright member posts except patent member fulfils the eligibility criteria of 25 years as prescribed in new notified rules, the 12th February, 2020, which says has, for twenty-five years, been an advocate of a proven specialised experience in trade mark law, as such the four appointments are contrary to the new notified rules. The same rule applies for Copyright law also.

    2. As per my limited knowledge there are two candidates, who have been selected for two member posts are husband and wife team. I am surprised despite of knowing as the two candidates are husband wife team, how can both be selected as member for one tribunal, there may be chances undue influence on the decisions come before IPAB.

    3. The terms and service conditions once published by the advertisement inviting application for suitable candidates cannot be changed unilaterally if changed the whole process gets diluted for example if applications are invited for Member posts as mentioned above after February 2020 as per new notified rules, the 12th February, 2020

    3. As with regard to patent member if you see the qualification of 2017 or 2020 the eligibility condition for the patent member does not confirm to the doctrine of the equity as per this doctrine no one can prescribed different parameters of eligibility for the same post for example 2017 rule or 2020 new rule says that

    (5) A person shall not be qualified for appointment as Technical Member (Patent), unless he, –
    (a) has, for five years, held the post or exercised the functions of the Controller under the Patents Act, 1970 (39 of 1970); or
    (b) has, for twenty-five years, functioned as a registered patent agent and possesses a degree in engineering or technology or a master‘s degree in science from any University established under law for the time being in force.

    As per rule who also enjoys the 5(a), five years, held the post or exercised the functions of the Controller under the Patents Act, 1970 (39 of 1970) it means even the Assistant controller, who also exercises the power functions of the Controller is eligible, it means, the Assistant controller having not more then 10 years of service can become member patent in comparison to the advocate who must have has, for twenty-five years, functioned as a registered patent agent and possesses a degree in engineering or technology or a master‘s degree, this rule creates different eligibility criteria for one post and totally contravening the doctrine of the equity. If one looks at the Trademark member eligibility wherein a officer not less than Joint registrar having % years of experience cannot be eligible, so as such there is big anomaly even in the case of Patent member which may create hurdle for his selection as his selection is in total contravention to the doctrine of the equity where there are different eligibility conditions for different candidates for the post having same service conditions.

    Whether any of the presently selected candidates fulfills the criteria as prescribed under new notified rules, the 12th February, 2020. In my onion, it is negative a big no. It means the appointment approved by the DIPP of these candidates for Member of Trademark and Copyright do not comply the prescribed eligibility conditions as mentioned above. Further husband and wife cannot be selected in any manner in the same tribunal, when both do not have prescribed qualification criteria.

    Further the new notified rules, the 12th February, 2020 have been challenged by the various bars in their respective High Courts, lead was taken by the Revenue bar association Vs UOI, which was filed in the Madras High Court on 18th of February 2020. The bench of Madras high Court has issued Stay to the extent of appointments carried out during pendency subject to outcome of this petition. Ater many high Courts have issued notices in the petition challenging the new notified rules, the 12th February, 2020 .

    Recently Madras High Court Bar Association has filed petition in supreme court challenging the new notified rules, the 12th February, 2020 referring that new rules are contrary to Roger mathew judgment passed by Constitutional bench and further many other judgments by the Supreme Court and the same was listed on 10th of August 2020, the Supreme Court has listed the matter for 7th of September 2010 for further hearing so as such in this context the appointments may be in limbo if the Supreme court stays the notification on next date or quashed this rule on its finality.

    I hope my above comments will further clear the air or confusion as per your post.

    Reply
    1. Prashant ReddyPrashant Reddy Post author

      Sorry Vidyut – could not quite understand the point you are trying to make. If these selections were made under the 2017 Rules, the warrant of appointment cannot be issued because those rules no longer exist. The DIPP would be in contempt of the Supreme Court’s judgment. There is no doubt about it. If by chance the appointments have been made under the 2020 Rules, then they will be legal. Your point that the appointments were made under the Trade Mark Act and not the 2017 rules is incorrect because the Finance Act, 2017 has taken away the powers of appointment from the Trade Mark Act.

      Regards,
      Prashant

      Reply
      1. AvatarAnonymous

        Dear Prashant
        When section process is complete before the notification of new rules, how the appointment can be made under new rules which have been substantially changes with regard to qualification, experience, term of appointment (for five years or upto 65 years in place of 3 years or upto 62 years (under old rules) and of of course Pay scale (under new rules pay scale has been upgraded compared to old rules.Even in case of technical member for patent, the person would not have applied considering that he has completed 62 years or about to complete 62 years but had it been known that it is 65 years in place of 62, and appointment is for 5 years instead of 3 years he would have certainly applied, so such persons have lost their opportunity to apply on the basis of equity.Therefore appointment under new rules of 2020 can not be done on the ground of equity.However the big question is who is going to challenge these appointment which are illegal and contravention of not only Supreme Court order but also again the principle of equity and natural justice.If the new rules are notified,DIPP should have issued fresh notification for selection/recruitment of technical members.

        Reply
        1. Prashant ReddyPrashant Reddy Post author

          Hi Anon,

          I agree – I hope some IP lawyers do bring the issue to the notice of the DIPP or the DoPT before the Warrants of Appointments are issued – it will save everybody from the headache of going to court. I think the departments will stop the appointments – the reason the order was issued on July 21, 2020 was because of the Delhi High Court case – in the hurry they must have forgotten to conduct their due diligence.

          Regards,
          Prashant

          Reply
  3. AvatarVidyut Agarwal

    Dear Prashant

    I think though I have written elaborate comments explaining in detail but I explain here again for your convenience

    1. See the DIPP advertisement it has invited applications under Trademarks Act 1999 not under 2017 Rules. As per TM Act 10 year of practice as advocate required.

    2. The selection process of the advocates for the Member posts was carried as per TM Act 1999 not under 2017 Rules.

    3.The DIPP has issued letter of appointment For Members Posts under new notified rules of 2020 . The new notified rules has eligibility criteria of 25 years of practice as advocate with Trademark specialisation. Whereas all the applicant do not fulfil the criteria prescribed under new notified rules of 2020. Hence all appointments of advocates as members is illegal and contrary to the new rule.

    3. All the advocates appeared in the interview for the member post do not have requisite experience Of 25 years as prescribed in new notified rule Of 2020 hence such all appointments are void ab initio.

    4. As the Selection process was carried under section 85 of the TM Act 1999 the DIPP should have issued letter of appointments under section 85 of the TM Act 1999 But issuance of appointments letter for me ever post under new notified rules attracts illegality and contravention of rule as no one fulfils the eligibility criteria of 25 years of practice as advocates.

    As such all appointments for member post are contrary to the rules and are void an initio.

    Reply

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