IPAB: Nature of Jurisdiction, Power and Authority

2nd January, 2014 - 5:17 am Categories: IP Litigation IP Practice in India IPAB Decisions Patent Litigation Patents 0 Comments

Akash Patel, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks at the nature of jurisdiction at the IPAB, its power and authority.

In a judgment dated July 08, 2013, a larger bench of Intellectual Property Appellate Board (hereinafter read as IPAB) had decided on two important issues, one relating to IPAB’s power to review its own order and the other relating to grant interim orders on a pending final application.

Background:

In the matter of M/s Shreedhar Milk Foods Pvt. Ltd. (Applicant) vs Mr. Vikas Tyagi (Respondent), Applicant requested for an interim stay order on the registration of Trade Mark on the ground that it was obtained by fraud. Applicant relied upon various decisions of the Court earlier, wherein interim stay was granted. He also referred to Indian Bank Vs.  Satyam Fibres (India) Pvt. Ltd. (Air1996 Supreme Court  2592) and  Grindlays Bank Ltd. Vs. Central Government Industrial Tribunal  And Others  (Air 1981 Supreme Court  606) in support of his contention that every Tribunal  should be considered to have such power ancillary or incidental as are necessary to do justice in a case where if prima facie case is  established, stay must be granted. Respondent opposed for granting stay on the ground that IPAB has no power to grant stay.

Decision:

The larger bench has held that IPAB has power to grant interim order. They have also issued following guidelines while granting interim orders in order to avoid injustice:

1. The Board will first explore the possibility of main matter being decided expeditiously.
2. No interim orders shall be granted without hearing the other side, as provided for in section 95(2) of the Trade Marks Act.
3. If the trade mark and patent have been in force for a considerable period that will be a condition against grant of interim orders.
4.  Factors such as prima facie case, balance of convenience, irreparable injury, and hardship shall be kept in mind; and
5. The order is preferably be so worded as to bind only the parties to the proceedings and no one else.

The Bench had also mentioned in judgment, that similar decision would also be applicable to proceedings under the Patent Act, 1970(hereinafter referred as the Patent Act) or under any other Act, which is brought under IPAB.

When IPAB was constituted in September 15, 2003 under section 83 of The Trade Mark Act, 1999, whatever power the High Court was vested with, got transferred to IPAB. IPAB has Original jurisdiction and Appellate jurisdiction and when the power of the High Court was vested in the IPAB, the power did not change. There was nothing contained in the language of section 95 of the Trade Marks Act to exclude the IPAB’s power to grant interim orders in the original application. Section 95 only modulates the manner in which interim order in appeals may be heard.

This is a significant judgment in the history of IPAB. The bench in this judgment has cleared matters that relate to its jurisdiction. Bench held that from the date of its establishment, it was clear that IPAB had both original and appellate jurisdiction. IPAB’s powers in relation to its jurisdiction are parallel to that of High Court as enshrined by Article 227 of the Constitution. In this decision, Bench has recorded the Jurisdiction, Power, and Authority of IPAB. IPAB had both original and appellate jurisdiction and has power in parallel with High Courts in the matters of Trade Marks, Patents and Geographical Indications.

Therefore, this decision will help any person aggrieved of natural justice by the unreasonable acts of the Controller to protect his rights. In such cases where the person feels that he is being aggrieved of his rights due to any unreasonable actions, he can very well approach the Board for seeking relief.

Therefore, based on the above-mentioned facts and background, it is clear for now that there may be distinction between Trade Mark and Patents as regards the possibility of approaching IPAB is concerned for matters relating to original jurisdiction of the IPAB.