In 1798 English political scientist William Godwin observed, “The system of administration of justice in England suffers from three defects – delay, cost and glorious uncertainty in the final outcome of any litigation.”
This observation holds true today in many Commonwealth countries, including India. Demands arising from the multiplicity of laws, the complexity of procedures and the very structure and organization of the courts account for most of the time spent in litigation.
Delay, the enemy of IP holders
The menace of delay in the disposal of cases before the judiciary has severe repercussions for the rightful holders of intellectual property, in cases where IP is disputed.
In September 2003, India upgraded its legal system in relation to IP, through the establishment of the Intellectual Property Appellate Board (IPAB) in Chennai.
The IPAB was established by a gazette notification of the Indian government to hear appeals against the decisions of the registrar under the Trade Marks Act, 1999, and the Geographical Indications of Goods (Registration and Protection) Act, 1999.
In April 2007, a notification brought the provisions of the Patents (Amendment) Act, 2002, and the Patents (Amendment) Act, 2005, into force in relation to the IPAB. The aim was to ensure speedy disposal of appeals against the decisions of the controller of patents. Before this notification, appeals had to be filed before a high court, which was expensive and time-consuming.
From 2 April 2007, all pending appeals under the Patents Act before various high courts in India were transferred to the IPAB, through the action of another notification.
The IPAB has its headquarters in Chennai, and also holds sittings at Mumbai, Delhi, Kolkata and Ahmedabad. The appellate board consists of a chairman, ZS Negi a vice-chairman, technical members – Syed Obaidur Rahaman, S Usha and S Chandrasekaran, and a deputy registrar, G Vijaya Raghavan; while a bench consists of one judicial member and one technical member.
The presence of a technical expert as a member enables the bench to better grasp the details in the matter. The specialized knowledge and approach of the IPAB results in better-quality and speedier decisions than are possible from a generalist body such as high courts, which deal in every sphere of law.
Range of powers
Appeals are directed to the IPAB following any decision, order or direction of the controller of patents or the Indian government with regard to the following matters: refusal or amendment of applications; division of applications; dating of applications; cases of anticipation; potential infringement; substitution of applicants; revoking of patents; mention of inventors; patents of addition; amendment of applications; restoration of lapsed patents; surrender of patents; registration of assignment or transmission; correction of clerical errors; compulsory licences, including those based on government notification; termination of compulsory licences; revocation for non-working patents; and licensing of related patents.
Appeals from an order or decision of the registrar of trademarks can be filed before the IPAB. Similar matters arising under the Geographical Indications of Goods (Registration and Protection) Act, 1999, are also heard by the IPAB.
The appellate board can also entertain original applications for the rectification of the trademark register with regard to removal from the register on the ground of non-use, and for cancellation or variation of a trademark registration.
When the validity of a registered trademark is questioned in a suit due to alleged infringement, the application for the rectification of the register with regard to the registered trademark is made only to the IPAB and not to the registrar of trademarks. Appeals with regard to the registration or removal of trademark agents are also heard by the IPAB.
The IPAB has been given the power to make rules that are consistent with the Patents Act, 1970. This empowers the board to deal efficiently with the matters that come before it.
The career of the IPAB over five years shows that it has made a significant contribution to the timely disposal of IP matters, and the reduction of litigation costs. Its establishment has proved to be a successful measure to achieve quick redressal of IP disputes.
Ravi Singhania is the managing partner and Dipak Rao is a partner at Singhania & Partners. The firm is headquartered in Noida and has offices in New Delhi, Mumbai, Bangalore and Hyderabad.
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