Topical Highlight
Justice Prabha Sridevan on Govt’s Proposal to Shut Down IPAB and the Way Forward
In this guest post, Justice (Retd.) Prabha Sridevan notes that the Government’s proposal to scrap the IPAB is a welcome change. She argues that the functioning of the IPAB makes the two ostensible reasons for tribunalisation unsustainable: expert insight and speedy justice. She argues that regular courts are also more than capable of eliciting expert opinions, citing multiple cases where this has been done. Further, the staggered hearings at the IPAB often increase the pendency of cases before it. She notes that it takes years for a revocation petition / appeal against a rejection to reach finality, thereby eluding speedy justice. Further, the independence of the IPAB is suspect, given that the government controls it financially and is in charge of appointments to it. She also cautions against the eating up of the jurisdictional space of High Courts by tribunals, particularly because IP cases involve public interest and constitutional rights, adjudicating upon which maybe beyond the ambit of a tribunal’s jurisdiction. She concludes by arguing for the creation of an IP Bench in the High Courts.
Thematic Highlight
The Grand Old Indian Trade Marks Register: Episode 1 (1877-1881)
In part 1 of this three-part post, our former blogger Aparajita Lath, traces the birth and early life of the Indian Trade Marks Register, which ‘institutionalized’ trademark protection in India. In the first part she covers the first phase of legislative activity. She notes that prior to the enactment of the Trade Marks Registration Act, 1875 in England, English trademark law was fragmented, and without a centralized law on registration, consisted of common law remedies, criminal remedies and trade specific laws. As manufacture, particularly cotton manufacture, increased in India, the need for trade mark registration and protection was also felt. She highlights that while common law protected reputation / goodwill generated from the use of trademarks, such protection involved cumbersome actions and a trade mark system would allow the establishment of property rights upfront, serving as notice to other traders, cheapening and also reducing trademark disputes. Thus, in 1879, a bill was proposed, as per the 1875 Act in England, as per which there would be no action for trademark infringement unless a trademark was registered. However, this bill was withdrawn abruptly because suddenly, leading commercial associations that had backed it initially changed their stance and agreed that a centralised registration system would not only be unnecessary but also inconvenient.
The Grand Old Indian Trade Marks Register: Episode 2 (1881-1920s)
In part 2 of this post, Aparajita focuses on the period from 1881 to 1920s. By examining archival records, she discovers the reason behind the Indian opposition to the legislation establishing a nation-wide trademark registration system. The Indian commercial community led the opposition to the legislation. As British-manufactured goods were trading in India through independent merchants, it raised uncertainties regarding trademark ownership and all solutions seemed unviable. Furthermore, there was lack of expert staff to adjudicate upon trademark application. The community was also worried about the alternative of Indian trademarks being registered under the English statute as they felt that Indian trademarks would not be considered distinctive enough under the English law. This fear was heightened in cotton and cloth markets, where brands had negligible difference. It was also believed that a registration system was not required in India as it was only imitation that was generally under dispute and not ownership. As a result of this opposition, rights to a trade mark continued to be acquired only through use till the 1940s.
The Grand Old Indian Trademarks Register: Episode 3 (1920-1940)
In part 3 of this post, Aparajita highlights certain changes in the commercial landscape which led to commercial opinion bouncing back in favour of registered trademarks. She notes that by 1939, the cloth and cotton markets were no longer dominated by British goods but by Indian and Japanese goods. She also highlights that the abnormal demand due to the second world war, caused an increase in deliveries from mills to go-downs. Large scale industries were unable to personally contact consumers and therefore a gap emerged between makers of goods and consumers, increasing the importance of trademarks as substitutes for personal contact. There were also debates regarding growing uncertainty on ownership of trademarks which led to the belief that a registration system was required. Aparajita concludes by noting that the first, comprehensive law that established a nation-wide system of trade mark registration came into being in 1940, and as the growing number of trademark applications received by the Trade Marks Registry demonstrates, faith in this institution has certainly increased over time.
Other Posts
Justice Manmohan Singh Holds Hearings at IPAB Despite Supreme Court Ruling
In this post, Praharsh notes that as per the causelist, Retd. Justice Manmohan Singh is still holding hearings in the IPAB and passing orders despite the Supreme Court’s rejection of the application for extending Justice Singh’s tenure as the IPAB Chairperson. Praharsh highlighted the judgment’s clarification of the position of the law regarding the tenure of the Board’s Chairperson. He also provided a helpful flowchart (pdf) to make it convenient to understand the developments surrounding the case. He highlighted the Court’s ruling that Section 184 of the Finance Act does not ipso facto prescribe or indicate any term of appointment or tenure, except to enumerate outer limits of tenure terms. He also noted that the Court negated the assumption that the Chairperson is a judicial member or that only a judicial member is capable of becoming the Chairperson, holding that as per Section 84(3) of the Trade Marks Act, a Chairperson can function as both a judicial and technical member. He concluded by arguing that the authority under which hearings are still being held by the incumbent is not clear.
Image from here
The Amended Form 27 and Uncertainty in Timelines for Filing
In this post Adyasha, highlights an issue regarding the filing of working statements (Form 27) as per the amendments made to Patent Rules, 2003 in October last year. She points out that the amendment to Rule 131(2) shifts the time period for which the disclosure statements are to be filed, from ‘calendar’ year to ‘financial’ year. This changes the time period for filing statements from 1st January to 31st December (as required earlier) to 1st April to 31st March. Due to the Amendment coming into force midway, the next set of working statements due would be for the period of April 2020 to March 2021, followed by April 2021 to March 2022, and so forth. This leaves a gaping hole in the timelines – the first quarter of 2020, for which no instructions have been provided. Adyasha suggests that there may be three possibilities to deal with the issue. Firstly, the government could observe the switch from April 2019 itself and invite statements for financial year April- March 2020. Secondly, the statutorily mandated disclosure requirement for January-March 2020 may be skipped altogether. Thirdly, the Patent Office may seek a separate working statement covering only January-March 2020. She concludes by stressing upon the need for a clarification from The Patent Office or the Department for Promotion of Industry and Internal Trade.
Decisions from Indian Courts
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