It is said that there is a requirement of lawyers as long as there are people. In this globalizing age, It is likely to gain further strength as more lawyers are required to deal with cases arising from trademarks and related disputes due to the development of the importance of the World Trade Organization( WTO). The scope of lawyers grows daily and they have different private and government opportunities depending on the choice of their practice. This article discusses the opportunities that a lawyer has before the board of appeal for intellectual property (IPAB).
WHAT IS IPAB?
The Intellectual Property Appellate Board was established on 5 September 2003 with the aim of hearing and adjudicating appeals against orders issued by the Registrar in accordance with the Indian Trademarks Act, 1999 and decisions are also taken by the court in accordance with the Indian Geographical Indication of goods Act, 1999. The aim of IPAB is to quickly eliminate appeals and rectify applications. The board of appeals for intellectual property is based in Chennai and has its banks in Delhi, Mumbai, Kolkata and Ahmadabad.
- Section 83 of the Trademarks Act, 1999 provides for the creation by the Central Government of the Appeals Board, known as the Intellectual Property Appeals Board, to exercise the jurisdiction, powers and powers conferred on it.
- The provisions of the Geographical Indications of Goods (Registration and Protection) Act 1999 provide for the registration and better protection of goods- related indication marks. Among the various features (registration and protection) of the geographical indications of goods this provision provided for appeal remedies before the Intellectual Property Appellate Board (IPAB), established in accordance with the 1999 Trademarks Act.
- Section 117 G of the Patents Act (Amendment) 2002 provides that all appeals against the Controller’s order, i.e. the Government and all rectifications pending before any High Court, shall be transferred to the Appellants Board. And the board may proceed either with the de novo case or at the stage at which it was transferred.
- Now that the Finance Act of 2017 has come into force, the Copyright Board has been merged with the IPAB and all pending cases before the Copyright Board are now transferred to the IPAB.
- In order to regulate its proceedings, the IPAB adopted the 2003 Rules of the Intellectual Property Appeal Board (Procedure) so that there is no illegality in the proceedings and no excessive power is used.
- All decisions are taken by the Board of Appellate for Intellectual Property in the course of any appeal before it is final and binding.
- IPAB is a management body that has appeal jurisdiction over the decision of the Patent or Trademark Controller. However, IPAB does not have any statutory power to proceed with the infringement procedure.
- The IPAB exercises jurisdiction over the Central Government ‘s orders in matters relating 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 the appellate Board, consisting of:
- Vice- Chairman
- Technical Member( Patents)
- Technical member (trademark)
- The competence, powers and authority of the Board of Appellate shall be exercised by the Benches, which are established in different places.
- The bench comprises one technical member and one judge.
- The President has the authority to transfer a Member from one bank to another.
- The Chairman may also perform the duties of a judge or a technical member of more than one bench simultaneously.
- The chairman may authorize a vice- chairman or a judge or a technical member of a bench to perform the duties of a judge or a technical member of another bench.
- If there is any question as to which bench, the subject matter falls, the Chairman decides which bench will examine the matter.
QUALIFICATIONS OF APPOINTMENT IN IPAB
Section 85 of the Trade Marks Act, 1999 provides for appointment qualifications as Chairman, Vice- Chairman or other IPAB members.
- A person shall be eligible to be appointed Chairman of IPAB only if and only if; he is or was a Judge of the High Court; or, he has held the office of Vice-Chairman of IPAB for at least two years.
- 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 two years.
- Or he was a member of Indian Legal Services and held a position in grade 1 of that service for at least five years or held a position in Indian Legal Service for at least five years.
- To be a judicial member of IPAB, one must be a member of the Indian Legal Service and must have held the position in grade 1 for at least three years. Or for at least 10 years, he must have held a civil judicial office.
- To be appointed as a technical member in IPAB, a person must be an advocate for at least 10 years in a proven specialized field of trade mark law.
- The Chairman, the Vice- Chairman and both members, i.e. The President of India shall appoint the Judicial and Technical Members.
- Each bench consists of a jurist and a technical member.
- In the event that the members of a bench differ in the opinion of any right, they express the differing points or points, and make a reference to the Chairman who, according to the decision of the majority of the Members who have heard the case, should either hear the points himself or refer the case for hearing on such a point or points by at least one or more members and decide on such points or points; including the members who initially heard it.
LAWYERS IN IPAB
A trade mark is more or less the identity of a product or service on the market. Any symbol, name or mark may be referred to as a trade mark if it differentiates between goods. And it is important to protect the trademark from being copied or infringed in order to maintain the unique identity of a good or service. And this is where a Trademark Attorney’s expertise is used.
- A trademark lawyer is a person who is an expert in matters relating to the laws and designs and practices of trademarks and provides legal advice on the matter. He is a professional who has extensive knowledge of trademarks and normally deals with trademark cases.
- In India, anyone who has studied in the rules of practice at the Patent Office, i.e. trademark laws, or who has graduated from a law school and is a member of the Bar, may be a trademark attorney.
- In order to exercise trademark laws before the Intellectual Property Appeals Board or the Trademark Office, a lawyer must register himself and be registered to practice law in at least one of India’s states.
- He must also have passed the IPAB Law Bar Exam, after which he can only exercise trademark law before IPAB.
- The work in IPAB is similar to the work carried out by a lawyer in other courts, but since we know that IPAB deals only with appeals, only appeals proceedings are carried out in the IPAB.
ROLE OF TRADEMARK LAWYER
An Indian trademark lawyer helps trademark holders in all ways. They not only provide customers with guidance and advice on the registration and subsequent use of trademarks, but also ensure that the trademark does not infringe another’s rights. Trademark lawyers are also hired by large corporations and companies to provide assistance and guidance on matters concerning the company’s trademarks.
- A trademark lawyer helps to ensure that an application is properly registered with the trademark office in question. During this process, the lawyer usually informs his or her clients that the application is likely to become a registered trade mark.
- The lawyer also assesses whether there is a risk of adopting a certain slogan, word or logo. The lawyer also helps the customer to verify and ensure that the potential mark or name does not infringe any other person’s rights or rights.
- If the customer decides to proceed with the trademark, the lawyer files the application and contacts the trademark office as necessary.
- In a case of infringement or dilution, a trademark lawyer may be the plaintiff or the defendant. The lawyer has to evaluate evidence in this role and develop a theory of the case of his or her client.
- Other responsibilities include preparing and filing any relevant paperwork with the Court, facilitating the process of discovery and interviewing or depositing testimony.
- When the case is brought to trial, the lawyer shall represent his clients before the Court. If the case is settled outside the court, the lawyer usually negotiates for his client.
- The work of a trademark lawyer usually involves working with a customer, reviewing the paperwork that is also filed, filing for the registration of a trademark on behalf of the customer and tracking the registration in order to satisfy the customer.
OPPORTUNITIES FOR LAWYERS
- There are various opportunities for lawyers who work in the board of appeal for intellectual property and practice trade mark law.
- A Trademark Lawyer may not directly become IPAB Chairman, but has served as a High Court Judge. To be the High Court Judge, one must serve as a permanent lawyer in the High Court for at least ten years and then, in consultation with the Chief Justice of India (CJI), he can be appointed as a High Court Judge by the President of India. Once he has served as a High Court Judge, he can be appointed chairman of the IPAB.
- A lawyer may also be the vice- chairman if he is a member of Indian Legal Services and has held a position in grade 1 of that service for at least five years or has held a higher position in Indian Legal Service for at least five years.
- A Trademark Lawyer may also be a member of the IPAB if he is a member of the Indian Legal Service and has held a position in grade 1 for at least 3 years. Or for at least 10 years, he must have held a civil judicial office.
- A trademark lawyer if he has been advocating for at least 10 years in a proven specialized field of trademark law.
- A trademark lawyer has opportunities in connection with the work he receives in IPAB, such as working with the customer, registering the mark. He may also work in the Trademark Office or IPAB as a trademark agent. To do this, a lawyer must be a registered trademark agent and pass the IPAB Trademark Office Exam or if he served as an IPAB Trademark Examiner for 4 years or more before entering private trademark practice.
APPELLATE ROLE OF IPAB
Section 91 of the Trade Marks Act, 1999 states that “Any person who has been grieved by the Registrar’s order or decision under this Act may submit an appeal to the Appellate Board within 3 months of the date on which the decision sought to be appealed is notified to the person who prefers the appeal.”
- The Appellate Board shall appeal against; inter alia, any decision, order or direction of the Controller or Central Government pursuant to Sections 15 and 25(4) of the Patents Act, 1970.
- These provisions prima facie affirm the role of the IPAB in appealing to the Registrar of Trade Marks and the Patent Controller.
- The nature of the role of the IPAB appeal remains unclear, however, given that both the IPAB and the Registrar or the Controller, as the case may be, is competent authorities to exercise their jurisdiction in the same matter.
IN CONTEXT OF PATENT LAW
In J Mitra & Co’s case. In 2008, the Assistant Patent and Design Controller, the Supreme Court of India was asked to comment on the relationship between the IPAB and the Patent Controller. Although the case considered primarily the peculiar situation created by a delay in the enforcement of the amended sections 116 and 117A of the Patents Act, the observations made are important. The Court of Apex 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 quite clear from Section 25(4) that the IPAB appeals to the controller as to the post- grant opposition orders, whether or not the opposition is fruitful.
- Judge Muralidhar of the Delhi High Court in 2010 in UCB Farchim V. CIPLA Ltd. further clarified the jurisdiction of the IPAB in respect of a pre- grant opposition. In this case, the question arose as to whether an appeal to the IPAB can be maintained against the order given by the assistant controller to refuse the grant of the patent on the basis of an opposition before grant? Muralidhar drew a relevant distinction between a successful and a failing pre- grant opposition in resolving this question.
- As regards persons who did not succeed in the pre- grant stage of opposition in order to prevent the grant of a patent, the Court noted that, as long as these are intrigued persons, the importance of Sections 25(2) and 64, Patents Act is important. Their remedy is to document the opposition after the grant and wait for the Controller’s decision. You may file an appeal before the IPAB under section 117A or a request for denial under section 64 if you are not fortunate that you are still grieved by this decision.
- It is interesting to note that Section 117A, Patents Act, 1970 allows the IPAB to appeal against a controller’s order under Section 25(4) of the Act dealing with post- grant objections but not pre- grant objections.
- However, Section 117A provides for an appeal to the IPAB against the Controller’s decision under Section 15 of the Act to refuse the grant of a patent in the event that a pre- grant opposition is deemed to have merit.
- Therefore, if one reads together the decision of cases J Mitra and UCB Farchim, it implies that the IPAB exercises its jurisdiction over the patent controller in the following two circumstances and no other:
- Pursuant to Section 25(4), Patents Act, 1970, an appeal against any order made by the controller relating to an opposition submitted by an interested person regardless of the outcome.
- Under Section 15 of the Patents Act, 1970, if the opposition before grant is successful and leads to the refusal of the patent application.
- It should be noted that the simple success of a pre- grant opposition is not enough for the IPAB to have appeal jurisdiction over the controller, because even if the opposition is successful, Instead of rightly rejecting the patent application, the Controller may require that it be amended to its satisfaction and eventually grant the patent.
- Under these circumstances, no appeal shall be maintained to the IPAB.
Tip : you can visit Company Vakil for services relating to Patent Registration
IN CONTEXT OF TRADEMARK LAW
- In Costa & Co. Pvt Ltd V. Union of India, Vipin Sanghi, Justice of Delhi High Court, Dealed with an interesting question, the question before him related to the power of the IPAB to transfer to itself the applications for correction pending before the Registrar involving substantial overlap of evidence, although no statutory basis was provided for exercising such power.
- In response, Justice Sanghvi relied on the ruling of the Honorable Supreme Court of India in Tirupati Balaji Developers Pvt Ltd V. State of Bihar that the conferral of the appeal court had certain consequences as a necessary concomitant of that power.
- This includes the power to exercise additional and auxiliary powers without which the conferral of the main power can be made redundant.
- In addition, only the existence of appeal jurisdiction requires the lower jurisdiction to give all its assistance to the higher jurisdiction in order to effectively exercise appeal jurisdiction and the superior forum may issue a residence order or restraint order or suspend, speed up or regulate the proceedings in the subordinate forum.
- The hierarchy becomes meaningless, in the absence of it.
- The court found that the IPAB, which was an appeal authority under Section 91, Trade Marks Act, 1999, had the power to transfer the rectification applications pending with the registrar to it. The rationale here was triple.
- In the case of a request for rectification, the Registrar’s order is subject to an appeal by the grieved party to the IPAB. In the end, therefore, it is the view of the IPAB that would be final and binding on the parties.
- While exercising the appellate court authority, it would be shameful if IPAB could not recognize the fact that many proceedings are still pending between the same parties, involving the same issues, that the IPAB should take appropriate measures to maintain consistency in the decision- making process; saving the parties from harassment and excessive litigation costs simultaneously.
- Section 125(2) of the Trade Marks Act, 1999 gives the Registrar the authority to transfer the application for rectification to the IPAB at any stage of the proceedings, but only if he considers it appropriate. However, each transfer order, including an order refusing to transfer a pending application to the IPAB, is appealable under Section 91, Trade Marks Act.
- On the same basis, the Court stated that in such an appeal under Section 91, the IPAB is competent to conclude that the Registrar should first refer the pending application to the Board.
- The IPAB may therefore direct the Registrar to refer the pending applications to it and, if it has the jurisdiction to pass such an order in appeal, there is no reason why it cannot do so in proceedings pending before it otherwise.
- In conclusion, despite a jurisdictional overlap, the aforementioned judicial pronouncements confirm positively the extent of the appeal jurisdiction exercised by the IPAB over the Registrar and the Patent Controller in various circumstances.
Tip : you can visit Company Vakil for services relating to Trademark Registration
Being a trademark lawyer at IPAB is very adventurous because there are a number of opportunities for a lawyer to pass the IPAB bar examination to practice trademark law. In general, however, the job of a trademark lawyer is very lucrative, as the field of intellectual property, i.e. trademarks, patents, copyrights, geographical indications and industrial designs, is less visited, but is now growing on a large scale in the country.
Therefore, good and experienced lawyers are required to rescue ordinary people from difficulties in this area of intellectual property.
For any services relating to intellectual property rights you can visit Company Vakil