Provisions of the Indian Trademark Act declared unconstitutional

The Madras High Court (HC) on March 10, 2015 has declared certain provisions of the Indian Trademark Act 1999 as unconstitutional. In particular are the provisions that provide for the qualification criteria of the members of the Intellectual Property Appellate Board (IPAB). This ruling is the result of a writ petition filed by Prof. Shamnad Basheer in May 2011 contending that the entire selection procedure of the IPAB violates the separation of powers between the executive and the judiciary. Arvind Datar, senior lawyer representing Basheer, has said that the appointment process to the appellate board “was flawed” as a technical member could after a certain number of years become vice-chairman and subsequently a judicial member of the appellate board with no further qualification required. Further, the Act also allowed members of the Indian Legal Services or Indian Government Officers to become judicial members of IPAB.

For those of you who don’t know already, the IPAB has jurisdiction to hear all appeals from the order or decision of the Registrar with regard to cases relating to trademarks, patents and geographical indications. It also has the authority to provide an opinion on all cases pertaining to rectification of register. Thus, when the patent or trademark application that you had taken the trouble of preparing and filing gets rejected, the law gives you an opportunity to file an appeal with a board set up especially for handling such grievances.

However, in the recent years the IPAB has been riddled with several problems of its own. For example, once your appeal reaches the IPAB, your dispute would be examined by judicial members who have had little or no expertise in the field of Intellectual Property. That is, until a few days back.

 

The writ petition filed in 2011 basically stated that the judicial members of the highest technical dispute body in India, created to hear Intellectual Property disputes, were incompetent. The petitioner Prof. Shamnad Basheer stated, “There is not a single person on the IPAB who has any relevant IP expertise…..the IPAB has been functioning in contravention of the Constitution of India, which mandates all courts and tribunals to be independent and manned by competent people.

The Verdict

In light of this petition, the Madras HC comprising of Chief Justice Sanjay Kishan Kaul and Justice M M Sundresh has,

  1. Declared that the search and selection committee for the posts of the Judicial Member, Vice- Chairman and Technical member, headed by the secretary, department of industrial policy and promotion as its chairman, was loaded in favour of the executive, which is impermissible under law, as held by the Supreme Court,
  2. Recommended the Chief Justice of India to the post of IPAB Chairman be given due consideration by the Appointment Committee of the Cabinet,
  3. Directed the Secretary, Department of Industrial Policy and Promotion, Ministry of Industries and Commerce, to re-constitute the Committee, providing a predominant role in selection process to the judiciary for appointing members, both for the Vice-Chairman, Judicial Member and Technical Member. Source: Economic Times http://www.indiaeveryday.in/fullnews-certain-provisions-in-trademarks-act-unconstitutional-hc-1001-167555.htm

The petitioner Basheer after the verdict has said “Our stand has been vindicated. And I really hope the government begins to take tribunals more seriously and secure them on firmer legal moorings,”

How does this affect us?

  1. Well, before we jump to any conclusions, the High Court is not saying that the IPAB itself is unconstitutional and neither is the Indian Trademark Act of 1999 as many online sites would leads us to believe. Certain provisions in the Act need to be struck down as the separation of powers of the executive and judiciary is of paramount importance to the functioning of a democracy and the selection process of judicial members of the IPAB crosses this line or is blurry at best.
  2. The positive verdict instills faith in the judiciary in its power to strike down unconstitutional laws and to direct clear steps and measures to be taken to enforce its verdict. However, it remains to be seen the length of time taken to enforcThe Madras High Court (HC) on March 10, 2015 has declared certain provisions of the Indian Trademark Act 1999 as unconstitutional. In particular are the provisions that provide for the qualification criteria of the members of the Intellectual Property Appellate Board (IPAB). This ruling is the result of a writ petition filed by Prof. Shamnad Basheer in May 2011 contending that the entire selection procedure of the IPAB violates the separation of powers between the executive and the judiciary. Arvind Datar, senior lawyer representing Basheer, has said that the appointment process to the appellate board “was flawed” as a technical member could after a certain number of years become vice-chairman and subsequently a judicial member of the appellate board with no further qualification required. Further, the Act also allowed members of the Indian Legal Services or Indian Government Officers to become judicial members of IPAB.For those of you who don’t know already, the IPAB has jurisdiction to hear all appeals from the order or decision of the Registrar with regard to cases relating to trademarks, patents and geographical indications. It also has the authority to provide an opinion on all cases pertaining to rectification of register. Thus, when the patent or trademark application that you had taken the trouble of preparing and filing gets rejected, the law gives you an opportunity to file an appeal with a board set up especially for handling such grievances.However, in the recent years the IPAB has been riddled with several problems of its own. For example, once your appeal reaches the IPAB, your dispute would be examined by judicial members who have had little or no expertise in the field of Intellectual Property. That is, until a few days back.

     

    The writ petition filed in 2011 basically stated that the judicial members of the highest technical dispute body in India, created to hear Intellectual Property disputes, were incompetent. The petitioner Prof. Shamnad Basheer stated, “There is not a single person on the IPAB who has any relevant IP expertise…..the IPAB has been functioning in contravention of the Constitution of India, which mandates all courts and tribunals to be independent and manned by competent people.

    The Verdict

    In light of this petition, the Madras HC comprising of Chief Justice Sanjay Kishan Kaul and Justice M M Sundresh has,

    1. Declared that the search and selection committee for the posts of the Judicial Member, Vice- Chairman and Technical member, headed by the secretary, department of industrial policy and promotion as its chairman, was loaded in favour of the executive, which is impermissible under law, as held by the Supreme Court,
    2. Recommended the Chief Justice of India to the post of IPAB Chairman be given due consideration by the Appointment Committee of the Cabinet,
    3. Directed the Secretary, Department of Industrial Policy and Promotion, Ministry of Industries and Commerce, to re-constitute the Committee, providing a predominant role in selection process to the judiciary for appointing members, both for the Vice-Chairman, Judicial Member and Technical Member. Source: Economic Times http://www.indiaeveryday.in/fullnews-certain-provisions-in-trademarks-act-unconstitutional-hc-1001-167555.htm

    The petitioner Basheer after the verdict has said “Our stand has been vindicated. And I really hope the government begins to take tribunals more seriously and secure them on firmer legal moorings,”

    How does this affect us?

    1. Well, before we jump to any conclusions, the High Court is not saying that the IPAB itself is unconstitutional and neither is the Indian Trademark Act of 1999 as many online sites would leads us to believe. Certain provisions in the Act need to be struck down as the separation of powers of the executive and judiciary is of paramount importance to the functioning of a democracy and the selection process of judicial members of the IPAB crosses this line or is blurry at best.
    2. The positive verdict instills faith in the judiciary in its power to strike down unconstitutional laws and to direct clear steps and measures to be taken to enforce its verdict. However, it remains to be seen the length of time taken to enforce this verdict and in the meantime the employment status of the current judicial members seated on the board is unclear, not to mention the status of preexisting disputes put before such members. But most importantly, this is only the first round and the matter is likely to be examined in the higher court. Let’s hope the SC can recognize the value of this petition and uphold the HC verdict.
    3. In any case, the verdict gives a voice to Basheer and many others who hope to strike down outdated and other illicit laws and provisions in India. Given the history and culture of our country, the list of such outdated and unconstitutional provisions is endless and we desperately need citizens like Basheer to advocate for us.

    e this verdict and in the meantime the employment status of the current judicial members seated on the board is unclear, not to mention the status of preexisting disputes put before such members. But most importantly, this is only the first round and the matter is likely to be examined in the higher court. Let’s hope the SC can recognize the value of this petition and uphold the HC verdict.

  3. In any case, the verdict gives a voice to Basheer and many others who hope to strike down outdated and other illicit laws and provisions in India. Given the history and culture of our country, the list of such outdated and unconstitutional provisions is endless and we desperately need citizens like Basheer to advocate for us.

Author Lynn Bout Lazaro is an IP Counsel

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