In January, 2011 the Madras High Court admitted a PIL (Shamnad Basheer v. Union of India - W.P. 1256 of 2011) challenging:
(a) The constitutionality of the qualification criteria of the members being appointed to the Intellectual Property Appellate Board (IPAB); in particular the objection was against the appointment of bureaucrats with no judicial or litigation experience as judicial members;
(b) The manner of appointment of these members to the IPAB, especially the composition of the selection committee; in particular the selection committee was stacked with members of the executive with the judiciary having only nominal representation.
The fundamental basis of the PIL was the judgment of a Constitution Bench of the Supreme Court in the case of R. Gandhi v. Union of India [(2010) 11 SCC 1]. In this case the Supreme Court had struck down some of the provisions providing for the National Company Law Tribunal (NCLT). Since the IPAB was structured on the same lines as the NCLT, it was highly likely that the Madras High Court would strike down several of the offending provisions of the Trade Marks Act, 1999.
Judgment of the Madras High Court dated March 10, 2015
The following is the gist of the High Court’s ruling on various sections of the Trademarks Act:
- S.85 (2)(b) - This provision was struck down as unconstitutional on the basis of the Supreme Court’s ruling in NCLT,i.e., a judicial function was being entrusted to a bureaucrat who lacked judicial experience
- S. 85(3)(a) - This provision too was struck down as unconstitutional on the basis of the Supreme Court’s ruling in NCLT, i.e., a judicial function was being entrusted to a bureaucrat who lacked judicial experience
- S. 85(4)(a) - This provision was read down by the Court. It held that only joint-registrars with a law-degree and 12 years of experience in the State Judicial Service could be appointed as technical members; the basis of this was a Supreme Court precedent which held that even technical members had to have some amount of judicial experience
- S. 85(2)(a) - The High Court read down the provision to hold that only technical members with qualification of 12 years judicial experience could be appointed to the post of Vice-Chairperson
- S. 85(1) - The High Court read down the provision to conclude that in the case of technical members, only those members with 12 years of experience and who served as Vice-Chairperson could be considered for the position of Chairperson
Apart from the above conclusions, the High Court also held that the Selection Committee will have to be reconstituted to give primacy to the judiciary and for the appointment of the Chairperson, the recommendation of the Chief Justice of India should be given “due consideration” by the Appointment Committee of the Cabinet.
As things stand today, the IPAB as an institution has not been declared unconstitutional. The IPAB can continue to function as a judicial institution. It may, however, be difficult for more benches of the IPAB to be constituted without amending the existing legislation.