Part I: IPAB's Power of Review

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The IPAB recently decided two important issues – whether it has the power to grant interim reliefs at the application stage and whether it has the power to review its own orders. The Board held that it has both the power to grant interim reliefs as well as the power to review. Both these matters were heard and passed as two separate orders here and here. The members of the Bar acted as intervenors and amici curiae. And as the IPAB put it, they were really ‘friends of the court’. The IPAB also stated that in order to bring uniformity and certainty, these orders would apply not only to proceedings under the Trademark Act, 1999 but also to proceedings under the Patent Act, 1970, the Geographical Indications Act, or any other Act that is brought under the IPAB in the future. 

These issues have been discussed previously here, here and here.

Brief Background 

Before the IPAB came into existence it was the High Court that dealt with rectification applications and appeals under the Trade Marks Act, 1958 and Patent Act, 1970. When the new TM Act of 1999 and Patent Act, 1970 (amended) came into force all cases of appeals and rectification/revocation pending before any High Court were transferred to the IPAB. Therefore, both Original and Appellate jurisdiction of the High Court in relation to these matters now vests in the IPAB. 

This post will first discuss the order pertaining to the power of review and then go on to discuss the interim relief issue. 

POWER OF REVIEW 

Pertinent Provisions 

Section 92, TM Act, 1999:

“92. (1) Procedure and powers of the Appellate Board The Appellate Board shall not be bound by the procedure laid down in the Code of Civil Procedure 1908 (5 of 1908) but shall be guided by the principles of natural justice and subject to the provisions of this Act and the rules made thereunder, the Appellate Board shall have the powers to regulate its own procedure including the fixing of places and times of its hearing. 
(2) The Appellate Board shall have, for the purpose of discharging its functions under this Act, the same powers as are vested in a civil court under the Code of Civil Procedure, 1908 (5 of 1908 ) while trying a suit in respect of the following matters, namely:- (a) receiving evidence; (b) issuing commissions for examination of witnesses; (c) requisitioning any public record; and (d) any other matter which may be prescribed.” 

Rule 23 of the IPAB (Procedure) Rules:

"23. Review petitions.- (1) A petition in triplicate for review of an order of the Appellate Board may be made to the Registry […] "

Arguments AGAINST the IPAB exercising the power of review 

Both the TM Act of 1999 and the Patent Act, 1970 (amended) (‘the Acts’) specifically provide the IPAB with Appellate powers. However, these Acts are silent on its power of review. Given that a substantive power of review cannot be implied and has to be explicitly stated in the statute, it was argued that the IPAB cannot exercise this power. Also, it was submitted that if such a power is conferred on the Board it would result in endless and protracted litigation. 

Interpreting Section 92 of the TM Act 

Section 92 of the TM Act, 1999 deals with the powers and procedure to be adopted by the IPAB. It was argued that the words ‘any other matter as may be prescribed’ in Section 92(2)(d) should be interpreted ejusdem generis. Since this provision deals with the power to regulate procedure such as fixing of time, receiving evidence etc., it cannot be expanded to include a power of review. 

Powers of IPAB not same as High Court 

In contrast to the powers of the High Court, Section 109(5) of the TM Act, 1999 had done away with the second appeal mechanism in relation to the IPAB and Section 95 of the Act restrained the IPAB from passing exparte interim orders pending appeal. Therefore, it was contended that the Parliament did not transfer all the powers of the High Court to the IPAB. Thus, even though the High Court may have the power of review, the same did not extend to the IPAB. However, it was submitted that the IPAB had a limited power to review procedural errors but could not review on merits. 

Arguments FOR review and the IPAB’s decision 

Remedilessness

A point that was continuously stressed on was that the IPAB is a not a quasi judicial or administrative tribunal but a Judicial Authority. It exercises both Original and Appellate jurisdiction. While exercising its Appellate jurisdiction, it is the last court of law and facts. After which, the aggrieved party has only one remedy - to approach the High Court under Article 226. However, this remedy is provided only at the discretion of the High Court. Therefore, there is no correctional mechanism, by appeal to a higher Tribunal (as in case of appeals from the State Consumer Forum to the National Consumer Forum). Therefore, if the power of review is also taken away, the party is left remediless.

The IPAB cited examples to strengthen its argument for substantive review - "It is possible that by a mistake the IPAB revokes a Patent relying on a “prior art” which is really not prior art but a post grant document. Should the litigant then be driven to the High Court by a writ petition? Interest of justice requires that it can be corrected in review. This is a substantive review. We are citing a fairly simplistic example only to drive home the point why we would not be crossing forbidden territory by recognizing the power of review."
The IPAB also reasoned that when cases were transferred to the IPAB from the High Courts, the IPAB could not take away any right the litigant had to any remedy in a pending matter and this included the right have the matter reviewed. 

Power of review exists by necessary implication- Rule 23 IPAB Rules 

It was held that the Acts and Rules framed thereunder form a composite whole. Rule 23 which deals with the power of review was been framed pursuant to Section 92/117-B of the TM and Patent Act and hence is a part of the Act. It was held that if the IPAB were to hold that it has no power to review its own order, then Rule 23 will become meaningless. This would go against the principle of harmonious construction which requires all provisions of an Act to be given full effect. Also, the IPAB observed that since the vires of this Rule and the Board’s power to frame Rules has never been challenged, the IPAB cannot now say it does not have the power to review. 

Interpreting Section 92(2)(d) 

As per Section 92(2) (d) of the T.M. Act, the IPAB has the same powers that a Civil Court has in respect of 'any other matter which may be prescribed'. It was held that since the Acts define 'prescribed' as 'rules made by the Appellate Body' and these Rules confer the power of review, this power falls under 'any other matter prescribed'. Secondly, it was held that ‘any other matter’ is an all encompassing term which takes into account extension of time, intervention by third parties, adjournments and review. In this regard, parallels were drawn with the Section 22(3) (a) to (c) of the Administrative Tribunals Act which deals with matters almost similar to Section 92(2) (a) to (c). But clause (f) of Section 22 (3) of the Administrative Tribunals Act speaks of review. The IPAB used this to show that law makers treat an order of review on par with provisions relating to collection of evidence etc. thus showing that ejusdem generis allows reading in the power of review to ‘any other matter’. 

Held 

The IPAB held that the IPAB has the power to review not only procedural errors but also substantive errors, however, this cannot extend to a rehearing of the matter since it was not an appeal.