Supreme Court dismisses petition seeking extension of Intellectual Property Appellate Board Chairman’s term

The Supreme Court has dismissed the petition filed by “The International Association for Protection of Intellectual Property (India Group)” which sought direction to extend tenure of present Chairman of the “Intellectual Property Appellate Board” (IPAB), till the new Chairman is appointed. 

The court noted that Justice (Retd.) Manmohan Singh, soon after he demitted office as judge of the Delhi High Court, sometime after September 2016. On 26.07.2017, was also given the additional charge of the Chairman in the IPAB, i.e. the Board, in terms of the then extant 2017 Rules, for a period of three years—or until further orders, whichever was earlier. Later the said, order was amended and the tenure extended upto 21.09.2019, or till further orders, whichever was earlier.

The judgment in Rojer Mathew was delivered by the five judge Constitution bench on 13.11.2019, on the validity of 2017 rules and quashed them. However, before the 2017 Rules were declared unconstitutional, the tenure of the incumbent to the office of the Chairperson of the Board ended on 21.09.2019. 

A three-judge bench headed by Justices L. Nageswara Rao, Hemant Gupta and S. Ravindra Bhat has held the arguments on behalf of the applicant that the incumbent chairperson continued to remain in office in view of the declaration of law by Rojer Mathew, is insubstantial and cannot be countenanced.

Another argument urged by the applicant was that the Finance Act, 2017 had inserted Section 89A of the TM Act, (introduced by Section 161 of the former Act) which states that the tenure of office and maximum age of retirement would be governed by the terms of the said Finance Act and, consequently, the pre-existing tenure and age limits did not apply. 

The court said, “Undoubtedly, the purport of Section 89A was to overbear or supersede the pre-existing age and tenure limits (the existing tenure and age limits have been indicated in Section 86 of the TM Act). However, the Finance Act merely stipulates the potential maximum age limits and tenure limits. In the case of Chairpersons, the maximum age limit prescribed was seventy years (by virtue of second proviso to Section 184 (1). However, by virtue of the first proviso to Section 184 (1), members or chairpersons could be appointed “for such term as specified in the rules made by the Central Government but not exceeding five years from the date on which he enters upon his office”. Thus, the outer limit of the tenure was five years. As noticed earlier, the Central Government had fixed the tenure of chairperson of the board to be three years. By the time this rule was held unconstitutional, the tenure of the incumbent holding office of chairperson, of the board ended, on 21.09.2019. The final judgment in Rojer Mathew, could not have per se been applied to the facts of this case. The applicant’s contentions in this regard are of no avail; it is after the judgment in Madras Bar Association (supra) that the tenure has been mandated to be five years. It is to be noticed that even the 2020 Rules did not prescribe the maximum tenure; it rather confined the tenure to four years. In the facts of this case, even if that were to be applied – assuming such a course to be available, the four-year period too ended on 21.09.2020.”

The court also declined to the contention of the applicant that no members can function as Chairperson as none of the members are judicial persons but are technical members.

The court said, 

“The submissions of the applicant, in the opinion of this court, are meritless. Section 84 (2) of the TM Act no doubt states that a bench of the board shall consist of a judicial and a technical member. However, it is “subject to other provisions” of the TM Act. Section 84(3) commences with a non obstante clause and stipulates, by Section 84(3)(a) that a chairperson may, “in addition to discharging the functions of the Judicial Member or Technical Member of the Bench to which he is appointed, discharge the functions of the Judicial Member or, as the case may be, the Technical Member, of any other Bench.”

Thus, in the absence of any member, the chairperson may, if the occasion so arises, act as technical or judicial member…

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…In fact, the incumbent five technical members all hold legal qualifications8 (three of them holding masters in law, including one who holds a post-doctoral qualification). Four of these incumbent members were practising advocates in specialized fields of intellectual property (trademarks, and copyright) and one technical member (patents) had experience in the Patent Office. These members had practical legal experience of ten to fifteen years. The fact that they were appointed as technical members cannot obfuscate the fact that they are legally trained and qualified. Therefore, the argument that the technical members, in their position at the board as of now, cannot function without a chairperson, is unsustainable.”