Scrapping of IPAB

Recently, the Union Finance Minister introduced a new draft bill in the Lok Sabha which proposes to shut down the Country’s Intellectual Property Appellate Board (hereinafter IPAB). The said bill proposes to transfer the powers of IPAB to the High Court with regard to patent, trademark, GI, Plant Varieties related issues and to Commercial Courts for copyright matters.

The Statement of object and reasons under para 3 and 4 of the Bill provide the rationale behind shutting down of IPAB and 4 other Appellate Authorities. It states that an analysis of data of the past three years, reveals that tribunals in several sectors have not necessarily led to speedy justice.  The Tribunals that are proposed to be abolished are the ones handling cases in which either 1) the public at large is not the litigant or 2) which do not take away any significant amount of workload from the High Courts, neither provide speedy disposal of justice. Tribunals only add an extra layer of litigation as many cases do not achieve a finality at the tribunal level and are litigated further till the High Courts or the Supreme Court. Additionally, administrative actions related to such matters are also required. Therefore, the bill is deemed necessary to reduce burden on the public.

About the Board

The IPAB is a statutory body of Department of Industrial Policy and Promotion (DIPP) created under section 83 of the Trademark Act, 1999, in the year 2003. Initially, the Board used to hear appeals against the decisions of the Registrar under the Trademark Act, 1999 and the Geographical Indication of Goods (Registration and Protection) Act, 1999. However, subsequently, IPAB’s jurisdiction widened significantly with the power to hear appeals against the order of Controller of Patents, Registrar of Copyrights as well as appeals under section 56 of Protection of Plant Varieties and Farmers’ Rights (PPV&FR) Act, 2001. As per Section 84(2) of the Trademark Act 1999, the bench shall consist one judicial member and one technical member, the latter being different for each subject matter. Headquartered in Chennai, the IPAB has its benches at Chennai, Delhi, Calcutta and Ahmedabad. 

Some of the serious issues faced by IPAB are as follows:

• Since its inception, the IPAB has not had a chairperson for a cumulative of 1130 days.
• It has been revealed in the case of Mylan Laboratories v. Union of India & Ors^[1] that there are a total of 3935 cases pending adjudication before the Board across all its benches. As of now, there are 2626 trademark cases, 617 patent cases, 691 Copyright cases and 1 Geographical indication case pending at the IPAB.^[2]
• The position for the technical member of patents and trademarks has remained vacant since 4.05.16 and 5.12.2018 respectively. Besides, no technical member for Copyrights has been appointed since the merger of the functions of the Copyright Board with IPAB, post the enactment of the Finance Act, 2017. As a result, the Board has been unable to hear several critical compulsory licensing applications.^[3] At present, IPAB has only one technical member, relating to plant varieties protection. A dearth of technical members has significantly impeded IP litigation in India^[4].
• In the Mylan order, Justice Midha passed a rather unconventional order by invoking the doctrine of necessity and directing the dysfunctional Tribunal to hear urgent matters related to trademarks, patents and Copyright with the technical member of the PVP Authority. Although, the judgment has faced criticism for bypassing the subject matter competence as provided by the law, however, the underlying intention of the order was to streamline IPAB as the legislative intent was to ensure the continuity of IPAB and not its cessation due to a vacancy in its membership especially when the law was silent on the procedures to be adopted in the absence of a technical member.
• As far as infrastructure and adequate resources are concerned, several issues have cropped up. IPAB usually carries out its functions from its Chennai office, where it is headquartered, or in New Delhi, where its secondary office is situated. However, the Chennai office is in a poor condition lacking even the basic infrastructure. Moreover, after the creation of IPAB, the hearings were usually conducted either in its Chennai or New Delhi office. This has had severe implications on the access to justice as well as on the costs of justice.

Final Remarks

The crippling state of IPAB has plagued the IP system in India both for litigants as well as general public. Back in 2013, Justice Prabha Sridevan, (ex-chairman of IPAB), had written an opinion “Recommending that Government should shut down IPAB and transfer its powers back to the High Courts”^[5].

The draft bill proposed by the Finance Minister may come as a welcome move. Interestingly, one day after the bill was proposed, the Supreme Court passed a judgment dismissing the request for extension of the incumbent chairman of the Board filed by the International Association for the Protection of Intellectual Property (AIPPI).

At the outset, we can suggest that there should be IP benches in High Courts and the composition of the same should not be changed too often. A panel of expert advisors should be appointed from whom the Court can seek insights for deciding a dispute. Further, there could be party experts and Court appointed experts to rule out bias. The time line can be fixed to ensure quick disposal.^[6] We hope such steps help improving the health of IP litigation in India.

Author: Sanjana Ganguly, Third year student at Symbiosis Law School, Pune

[1] WP(C) 5571/2019 & CM A. 24540/2019 & 26833/2019

[2] Garg, V., 2019. India: A crutch for the limbless IPAB. [online] Life Sciences IP Review. Available at: <https://www.lifesciencesipreview.com/contributed-article/india-a-crutch-for-the-limbless-ipab> [Accessed 28 February 2021].

[3] Reddy, P. and Dhawan, P., 2020. The Case for Shutting Down the Intellectual Property Appellate Board (IPAB). [online] SpicyIP. Available at: <https://spicyip.com/2020/04/the-case-for-shutting-down-the-intellectual-property-appellate-board-ipab.html> [Accessed 28 February 2021].

[4] Narula, R., 2019. IP Appellate Board: Trouble at the IPAB. [online] World IP Review. Available at: <https://www.worldipreview.com/contributed-article/ip-appellate-board-trouble-at-the-ipab> [Accessed 28 February 2021].

[5] Sridevan, P., 2013. Whose tribunal is it anyway?  [online] The Hindu. Available at: <https://www.thehindu.com/opinion/op-ed/whose-tribunal-is-it-anyway/article5351733.ece> [Accessed 1 March 2021].

[6] SpicyIP. 2021. Justice Prabha Sridevan on Govt’s Proposal to Shut Down IPAB and the Way Forward. [online] Available at: <https://spicyip.com/2021/02/justice-prabha-sridevan-on-proposal-to-shut-down-ipab-and-the-way-forward.html> [Accessed 1 March 2021].