In this article, Amandeep Singh discusses opportunities for Lawyers before IPAB.
“Lawyers are the foot soldiers of the Constitution.”
It is said that for as long as there have been people there is a requirement of lawyers. In this era of globalization, it is probably going to get further force as more lawyers would be required to deal with cases emerging out of trademarks and related disputes because of developing the significance of the World Trade Organisation (WTO). The scope for lawyers is increasing day by day and they have various private and government opportunities depending on the choice of their practice. This article talks about the opportunities a lawyer gets before Intellectual Property Appellate Board (IPAB).
What is IPAB?
Intellectual Property Appellate Board was set up on 5th September 2003 with the objective of hearing and adjudicating appeals against the orders given by the Registrar under the Indian Trademarks Act, 1999 and also the decisions are taken by the court under Indian Geographical Indication of Goods Act, 1999. The aim of IPAB is speedy disposal of appeals and rectification of applications. Intellectual Property Appellate Board is headquartered in Chennai and it has its benches in Delhi, Mumbai, Kolkata, and Ahmedabad.
- Section 83 of the Trademarks Act, 1999 provides for the establishment of Appellate Board by the Central Government which is to be known as the Intellectual Property Appellate Board to exercise jurisdiction, powers, and authority conferred by this Act.
- The provision in the Geographical Indications of Goods (Registration and Protection) Act 1999 provided for the registration and better protection of indication marks which are related to goods. Among various features of the Geographical Indications of Goods (Registration and Protection), Act was the provision which provided for appellate remedy before the Intellectual Property Appellate Board (IPAB) set up under the Trademarks Act of 1999.
- Section 117 G of the Patents (Amendment) Act, 2002 provides that all the cases of appeals against the order of the Controller i.e. the Government and all the cases rectification of application pending before any High Court shall be transferred to the Appellate Board and the board shall may either proceed with the case de novo or from the stage at which it was transferred.
- Now that the Finance Act, 2017 has come into force, the Copyright Board has been merged with the IPAB and now all the pending cases which lay before the Copyright Board are transferred to the Intellectual Property Appellate Board.
- To regulate its proceedings, the IPAB made The Intellectual Property Appellate Board (Procedure) Rules, 2003 so that there is no illegality in the proceedings and there is no use of excessive power.
- All the decisions are taken by the Intellectual Property Appellate Board in pursuance of any appeal before it shall be final and binding.
- IPAB is a managerial body that has appellate jurisdiction over the decision of the Controller of Patents or trademarks. However, IPAB has no statutory powers to trial infringement proceedings.
- The IPAB exercises appellate jurisdiction against the orders of the Central Government in matters relating to –
Any decisions related to
- Investor Names
- Patent of Addiction
- Potential Infringement
- Compulsory license of a patent
- Revocation of patent for non-working
- Substitution of applicants
- Any Amendment/revocation of patent
- Amendment of Application and specification
- Restoration of lapsed patents
- Surrender of patents
- Divisional Application
- Dating of Application
- Revocation of patents to satisfy interest of the public
- Any registration of patent assignment
Composition of IPAB
Section 84 of the Trademarks Act, 1999 provides for the Composition of Appellate Board,
- The Board comprises of :
- Technical member (Trademarks) and
- Technical member (Patents).
- The jurisdiction, powers, and authority of the Appellate Board will be exercised by the Benches which are set up in different places.
- The Bench will consist of one Technical member and one Judicial member.
- The Chairman has the power to transfer a member from one bench to another bench.
- The Chairman, in addition, can discharge the functions of the Judicial Member or a Technical member of more than one bench at the same time.
- The Chairman may authorize Vice-Chairman or a Judicial Member or a Technical member of one bench to discharge the functions of a Judicial member or a technical member of another bench.
- If any question arises as to under which bench, the subject matter falls, the Chairman will decide that which bench will look into the matter.
Qualifications for appointment in IPAB
Section 85 of the Trade Marks Act, 1999 provides for Qualifications for appointment as Chairman, Vice-Chairman, or other members of IPAB.
- A person shall be qualified for appointment as the Chairman of IPAB if and only if;
- He is, or has been a Judge of a High Court; Or,
- Has for at least 2 years held the office of Vice-Chairman of IPAB.
- For being a Vice-Chairman of IPAB, a person is required to
- Hold the office of a Judicial Member or a Technical Member of IPAB for at least 2 years
- Or he has been a member of Indian Legal Services and has held a post in grade 1 of that service for at least 5 years or held any higher post in Indian Legal Service for at least 5 years.
- To be a Judicial Member in IPAB, one
- Must be a member of Indian Legal Service and he must have held the post in grade 1 of that service for at least 3 years.
- Or he must have held a civil judicial office for at least 10 years.
- To be appointed as a Technical Member in IPAB, a person – Has to be an advocate of a proven specialized field of Trade Mark law for at least 10 years.
- The Chairman, Vice-Chairman and both the members i.e. the Judicial and Technical members shall be appointed by the President of India.
- Every bench will comprise of a Judicial Member and a Technical Member.
- In the event that the Members of a Bench vary in the opinion of any right, they shall express the point or points on which they differ, and make a reference to the Chairman who should either hear the points himself or refer the case for hearing on such point or points by at least one or more members and such point or points shall be decided according to the decision of majority of the Members who have heard the case, including the members who initially heard it.
Lawyers in IPAB
A trademark is more or less the identity of a good or service which is present in the market. Any symbol, name or mark can be called a trademark if it distinguishes one good from another. And for maintaining the unique identity of a good or service, it is essential to protect the trademark from being copied or being infringed upon. And that is where the expertise of a Trademark Attorney comes into use.
- A Trademark Attorney or a Trademark Lawyer is a person who is an expert in matters related to trademark laws and designs and practices and provides legal advice regarding the matter. He is a professional having extensive knowledge of trademarks and usually deals with Court cases relating to trademark.
- In India, any person who has taken the course of study in the rules of practice in patent office i.e. trademark laws, or has graduated from a law school and is a member of the Bar can be a Trademark Lawyer.
- To practice trademarks laws before Intellectual Property Appellate Board or in the Trademark Office, a lawyer must get himself registered and he must also be registered to practice law in at least one of the states in India.
- He must also have passed the IPAB Trademark Law Bar Exam after which only he can practice trademark laws before IPAB.
- The work in IPAB is similar to the work done by a lawyer in other Courts but as we know that IPAB only deals with the appeals, so only the proceedings related to appeals are practiced in the IPAB.
Role of a Trademark Lawyer
A trademark lawyer in India assists trademark holders in every way. They not only provide guidance and counsel the clients on registration and subsequent use of trademarks but also make sure that the trademark does not infringe upon rights of another. Trademark Lawyers are also hired by big corporate companies and firms to provide assistance and guidance in matters relating to trademarks of the Company.
- A Trademark Lawyer helps ensure that an application is properly registered with the applicable trademark office. During this process, the Lawyer generally advises his or her clients on the probability of the application becoming the registered trademark.
- Also, the Lawyer evaluates whether any risks are involved in adopting a certain slogan, word or logo. The Lawyer also helps the client to check and ensure the potential mark or name does not violate the rights of any other person or entity.
- If the client decides to move forward with pursuing the mark, the lawyer files the application and communicates with the trademark office as needed.
- In an infringement or dilution case, a Trademark Lawyer can represent either the plaintiff or the defendant. In this role, the lawyer must evaluate evidence and develop a theory of his or her client’s case.
- Other responsibilities include preparing and filing any appropriate paperwork with the Court, facilitating the discovery process, and interviewing or deposing witnesses.
- If the case goes to trial, the lawyer represents his or her clients to Court. If the case is settled outside of Court, the lawyer usually superheads negotiations for his or her client.
- The job of a Trademark Lawyer usually involves working with a client, review of paperwork which too is filed, filing for registration of a trademark on behalf of the client, and following up on registration so that the client is satisfied.
Opportunities for lawyers
There are various opportunities for lawyers who are working in Intellectual Property Appellate Board and practicing trademark laws.
- A Trademark Lawyer can become a Chairman of IPAB not directly but if he has served as a High Court Judge. To be the High Court Judge one has to serve as a standing lawyer in the High Court for at least ten years and then he can be appointed as a High Court Judge by the President of India in consultation with the Chief Justice of India (CJI). Once, he has served as a Judge of High Court, he can be appointed as the Chairman of IPAB.
- A lawyer can also be the Vice-Chairman if he has been a member of Indian Legal Services and has held a post in grade 1 of that service for at least 5 years or held any higher post in Indian Legal Service for at least 5 years.
- A Trademark Lawyer can also be a Judicial member in IPAB if he has been a member of Indian Legal Service and he must have held the post in grade 1 of that service for at least 3 years. Or he must have held a civil judicial office for at least 10 years.
- A Trademark Lawyer if he has been advocating in a proven specialized field of Trademark Law for at least 10 years.
- A Trademark Lawyer gets opportunities in relation to work which he gets in IPAB like working with the client, registering the Trademark. He can also work as a Trademark Agent in the Trademark Office or in IPAB. For that, a lawyer has to be a registered trademark agent and he has to successfully pass the IPAB Trademark Office Exam or if he has served for 4 years or more as an IPAB Trademark Examiner before entering private trademark practice.
Appellate Role of IPAB
Section 91 of the Trade Marks Act, 1999 provides that “any person aggrieved by an order or decision of the Registrar under this Act, may refer an appeal to the Appellate Board within a period of 3 months from the date on which the decision sought to be appealed against is communicated to such person preferring the appeal.”
- An appeal shall lie to the Appellate Board from, inter alia, any decision, order or direction of the Controller or Central Government under Section 15 and Section 25(4) of the Patents Act, 1970.
- These provisions prima facie affirm the appellate role performed by the IPAB vis-a-vis the Registrar of Trade Marks and the Controller of Patents.
- However, the nature of the appellate role of IPAB remains unclear in the light of the instances where both the IPAB, and the Registrar or the Controller as the case may be, are competent authorities to exercise their jurisdiction on the same matter.
In context of patent law
- In the case of J Mitra & Co. V. Assistant Controller of Patents and Design, in 2008, the Supreme Court of India was required to opine on the relationship between the IPAB and the Controller of patents.
- Though the case primarily considered the peculiar situation created by a delay in enforcement of the amended Section 116 and 117A, Patents Act, the observations made therein are significant. The Apex Court had noted that,
“By Patents (Amendment) Act 2005 for the first time a dichotomy was inserted in the Patent Law by providing vide Section 25 (1) for ‘opposition to pre-grant’ and vide Section 25 (2) for ‘opposition to post-grant’ of patent the Legislature intended an appeal under Section 117A (2) to the Appellate Board from any decision, order or direction of the Controller, inter alia, under Section 25(4) the Legislature intended that there shall be only one statutory appeal against grant of the patent. The Legislature intended to obliterate appeal from ‘pre-grant proceedings’, which existed earlier.”
- It is very clear from Section 25(4) that the IPAB practices appellate jurisdiction over the Controller as for the post-grant opposition orders, regardless of whether the opposition is fruitful or not.
- However, the jurisdiction of the IPAB with respect to a pre-grant opposition was further elucidated upon by Justice Muralidhar of the Delhi High Court in 2010 in UCB Farchim V. CIPLA Ltd. In this case, the question which arose was whether an appeal to the IPAB is maintainable against the order given by the Assistant Controller refusing the grant of the patent due to a pre-grant opposition? In deciding this question, Muralidhar drew a pertinent distinction between a successful and an unsuccessful pre-grant opposition.
- As respects, people who have not achieved success in the pre-grant opposition stage to prevent a grant of patent, the Court noticed that as long as these are people intrigued, inside the importance of Section 25(2) and 64, Patents Act, their remedy is to document a post-grant opposition and wait for the decision of the Controller. On the off chance that they are still aggrieved by that decision, they can file an appeal before the IPAB under Section 117A or petition for denial under Section 64.
- It is interesting to note that Section 117A, Patents Act, 1970 permits an appeal to the IPAB against an order of the Controller under Section 25(4) of the Act which deals with post-grant oppositions but does not deal with pre-grant oppositions.
- However, Section 117A does provide for an appeal to the IPAB against the decision of the Controller under Section 15 of the Act, refusing a grant of a patent in case a pre-grant opposition is considered to hold merit.
- Accordingly, if one reads the decision of cases J Mitra and UCB Farchim conjointly, it implies that the IPAB will exercise its appellate jurisdiction over the Controller of Patents in the following two circumstances and no other:
- Under Section 25(4), Patents Act, 1970, an appeal against any order given by the Controller relating to a post-grant opposition filed by an interested person irrespective of the outcome.
- Under Section 15, Patents Act, 1970 if the pre-grant opposition is successful and results in the rejection of the patent application.
- It must be taken into consideration that mere success of a pre-grant opposition is not sufficient for the IPAB to have appellate jurisdiction over the Controller because even if the opposition is successful, the Controller can require the patent application to be amended to his satisfaction and eventually grant the patent, instead of rejecting it out rightly.
- In such circumstances, no appeal to the IPAB will be maintainable.
In the context of Trade Mark Law
In relation to Trade Marks Law, the role of IPAB is relatively clearer.
- In Costa & Co. Pvt Ltd V. Union of India, Vipin Sanghi, Justice of Delhi High Court, dealt with an interesting question, the question before him was related to the power of the IPAB to transfer to itself the rectification applications pending before the Registrar that involve substantial evidentiary overlap, even though there was no statutory basis to exercise such power.
- In response, Justice Sanghvi relied on a ruling of the Hon’ble Supreme Court of India in Tirupati Balaji Developers Pvt Ltd V. State of Bihar, held that the conferral of the appellate jurisdiction carries with it certain consequences as a necessary concomitant of that power.
- This includes the power to exercise incidental and ancillary powers without which the conferral of principal power can be rendered redundant.
- Further, only the existence of appellate jurisdiction obliges the lower jurisdiction to render all of its assistance to the higher jurisdiction to enable the exercise of appellate jurisdiction effectively and the superior forum may issue a stay order or restraint order or may suspend, expedite or regulate the proceedings in the subordinate forum.
- In the absence of same, the hierarchy becomes meaningless.
- Placing reliance on such reasoning, the court held that the IPAB, being an appellate authority by virtue of Section 91, Trade Marks Act, 1999, had the power to transfer to itself the rectification applications pending with the Registrar. The rationale adopted here was threefold.
- In case of a rectification application, the order of the Registrar is subject to an appeal to the IPAB by the aggrieved party. Thus, ultimately it is the view of the IPAB which would be final and binding upon the parties.
- While exercising the appellate authority, it would be shameful if IPAB cannot take cognizance of the fact that there are still many proceedings pending between the same parties, involving the same issues, the IPAB should take appropriate measures to preserve consistency in the decision-making process; simultaneously saving the parties from harassment and excess costs of litigation.
- Section 125(2) of Trade Marks Act, 1999 gives authority to the Registrar to transfer rectification application to the IPAB no matter at what stage the proceeding is but only if he thinks fit. However, every transfer order was given by the Registrar, including an order refusing to transfer a pending application to the IPAB, is appealable by reason of Section 91, Trade Marks Act.
- Relying on the same, the Court said that in such an appeal under Section 91, the IPAB is competent to arrive at a conclusion that the Registrar ought to have referred the pending application to the Board in the first place.
- As such, the IPAB can direct the Registrar to refer to it the pending applications, and if it has the jurisdiction to pass such an order in appeal, then there is no reason why it cannot do so otherwise in proceedings pending before it.
- In conclusion, despite there being a jurisdictional overlap, the cited judicial pronouncements positively affirm the extent of appellate jurisdiction exercised by the IPAB over the Registrar and the Controller of Patents under varying circumstances.
Being a Trademark Attorney or a Trademark Lawyer in IPAB is very interesting as there are a number of opportunities which a lawyer can get but he has to pass the IPAB Bar Exam to practice trademark law there. But on a whole, the job of a trademark lawyer is a very lucrative one, since the field of intellectual property i.e. trademarks, patents, copyrights, geographical indications and industrial designs is a less visited one but now it is growing at a large scale in the country. Thus it is required to have good and experienced lawyers to bail the common people out of the difficulties in this field of Intellectual Property.