Abolishment of IPAB: Changes to the IP Regime

May 16, 2021 - 1:23 pm Categories: IPAB 0 Comments

Intellectual Property Appellate Board (IPAB) was constituted by the Central Government on 15 September 2003, to hears appeals against the decisions of Registrar under the Trade Mark Act, 1999 and the Geographical Indications of Goods Act (Registration and Protection), 1999.[1] After four years, in 2007 the IPAB jurisdiction was extended to the Patents Act, 1970. Later through the Finance Act in 2017, it was further extended to the Copyright Act, 1957. IPAB was created with an objective to bring together the best set of expertise in the IP regime through technical members possessing technical and scientific knowledge sue to which it has delivered various landmark judgment However, it also succumbed to various difficulties due to being non-functional on account of lack of technical manners for various years, which lead to pendency and delay of matters.

Owing to such difficulties, the President on 4 April 2021 promulgated the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 with immediate effect.[2] This Ordinance dissolves various tribunals, including the IPAB, and transfers their functions to judicial bodies. The major reasons for the abolition of the IPAB include that the board has not led to quicker delivery of justice and has failed at optimistic reduction of burden on the exchequer. As per the Ordinance, appeals against the decisions of the Registrar of Trademarks, the Registrar of Geographical Indications, and the Controller of Patents will be filed before the High Courts and appeals against the decision of the Registrar of Copyright before the Commercial Courts.

Changes to the IP Legislations:

Copyright Act, 1957

The Appellate Board under the Copyright Act is dissolved and the powers of the Board are transferred to the Commercial Court and High Courts. Section 12 defining the powers and procedure of the Appellate Board has been deleted.[3]The Commercial Courts now possess the power to make final calls on whether a work has been published, handle assignment dispute, decide the term of copyright in anonymous and pseudonymous work, grant compulsory and Statutory Licenses, to grant a license to produce and publish translations, to grant a license to reproduce and publish works, to hear disputes with regards to tariff schemes by Copyright Societies and to fix resale share right in original copies of the first author.  Furthermore, the High Courts possess the powers to rectify the Register of Copyrights as per Section 50. It also has the power under Section 70 to hear appeals against the orders of the Registrar of Copyrights.

Patent Act, 1970

The ordinance has led to the abolishment of the Appellate Board, which possessed the power to hear appeals against decisions of the Controller General of Patents regarding revocation, ratification of patents, etc. Under the provisions of the act, ‘Appellate Board’ is substituted for the ‘High Court’. As a consequence, the High Court is empowered, inter alia, to revoke the patent is granted to fraud and to grant a patent to the true and first inventor, to rectify the Register of Patents as per Section 71 by making variations or deletions, to allows an amendment to complete specification, to issues validity certificate of specification.[4]

Trademarks Act, 1999

With the abolishment of the IPAB, the power of appeals against the decision of the Registrar of Trade Marks has been transferred to the High Court. The word ‘Tribunal’ or ‘Appellate Board’ is replaced with ‘Registrar or the High Court’ per context. The power conferred to the Registrar of Trademarks and the High Court is: to remove a trademark from the Register and to impose limitations on grounds of non-use, to require an applicant to furnish security, to vary registration and rectify the register, to deal with registration application of certification trademark, to admit evidence in proceedings, among others.

Geographical Indications of Goods (Registration and Protection) Act, 1999

Per the Ordinance, the powers of the Appellate Board have been transferred to the Registrar of Geographical Indications and High Courts. The common power possessed by them is to remove from the register due to failure to pay a fee for renewal, to vary registration and rectify the register, and to admit evidence in proceedings. Additionally, the High Courts are possessed with the powers to hear appeals from the decision of the Registrar, to communicate every order of the High Court to the registrar, to stay proceedings when the invalidity of registration is pleaded, to issue a certificate of validity of registration.

Protection of Plant Varieties and Farmers’ Rights Act, 2001

Per the Ordinance, the Plant Varieties Protection Appellate Tribunal set under Section 54 has been abolished.[5] Hence, the power to hear appeals against decisions of Registrar with regards to registration of a variety or a licensee of a variety, or regarding revocation/ modification of compulsory license, etc. are now transferred to High Court. Additionally, the High Court can pass orders as it deems fit.

The abolishment of IPAB amounts to the restoration of the status quo, as prior to the establishment of IPAB, the power to adjudicate was vested with the High Courts. The move is considered a step forward to deal with the pending cases and strengthen the IP protection and enforcement system. However, only time will tell whether the abolishment of the special tribunal will lead to a stronger IP regime by shifting the burden to the High Courts which may lack the technical knowledge and expertise in the field of IPR.

Author: Vibhuti Kaushik, a 3^rd Year student of B.B.A. LLB. Symbiosis Law School, Pune, intern at IIPRD. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1] Gazette Notification S.O.1049(E).

[2] Ordinance no. 2 of 2021.

[3] Copyright Act, 1957.

[4] Section 71, Patent Act, 1970.

[5] Section 54, Protection of Plant Varieties and Farmers’ Rights Act, 2001.