- Introduction
The “World Trade Organization’s agreement on trade-related aspects of intellectual property rights” (TRIPS) gave rise to the IPAB. According to the terms of this agreement, all participants agreed on the need of robust intellectual property rights protection and enforcement. As a signatory to the TRIPS agreement, India formed a specialised board, with specialised brains in the field of intellectual property rights, to deal with intellectual property issues, namely the Intellectual Property Appellate Board. [1] Prior to the founding of the IPAB, the High Courts had yet to resolve around 599 intellectual property disputes. A few of them had been pending for quite some time. “The need for the establishment of a specialized Board to deal with IP appellate matters was to ease the burden off the shoulders of the various high courts before which, such appellate matters previously, would lie.”[2] The abolition of the tribunal resulted in a rise in the total amount of matters to be handled by the commercial courts and the high courts, bringing legal management back to the beginning because the courts were already overloaded by the the amount of cases leading to pendency, and now the courts have to cope with more cases requiring special expertise. This abolition also had a negative worldwide impact. The main question now is whether it was a wise decision or a blunder by the lawmakers. [3]
- Did IPAB completely failed to perform its duties?
One of the primary concerns for corporations revolves around the effective protection of their intellectual property. But the manner through which the abolition brought about change is unusual. It amends the Trade Marks Act of 1999 and the Patents Act of 1970 by inserting a series of forum substitutes. The phrase ‘Appellate Board’ in these two acts was primarily substituted by ‘High Court’. [4] It simply transfers traffic from the Appellate Board down to the High CourtsIt leaves the existing jurisdiction and functions of the recipient forums untouched, with no effort made to restructure or incorporate this workload. Instead, the receiving forums were simply left to manage and conclude this task independently. [5]
But, did the board entirely fail to discharge its obligations over its almost 17-year tenure? Before addressing, it is important to recognise that every coin has two sides. It is also important to note that, despite the fact that the board or tribunal was formed with the mandate of resolving disputes with effectiveness and efficacy, the board didn’t have a chairperson for a total of 1130 days.
It is also worth noting that the board was missing a technical member in 2016 and no endeavours were made to appoint one. Furthermore, following the merger of the copyright board and the IPAB, it was agreed upon that a technical member to deal with copyright infringement issues would be appointed; however, no such person was recruited. The problem of appointment was raised by the Delhi High Court in the case of Mylan laboratories limited v. Union of India[6], in this instance, the Hon’ble court emphasized “the absence of technical members appointed specifically for copyright cases, as well as the prolonged vacancy of technical members in the realms of trademarks and patents. This extended period of vacancy has led to a backlog of cases, causing significant delays that have negatively impacted the rights of intellectual property holders”.[7]
- Arguments against the abolition of the IPAB
Its also important to note that the 161st report of the Parliamentary Standing Committee on Commerce, which assessed India’s Intellectual Property Rights framework, was submitted to both the Rajya Sabha and Lok Sabha on July 23rd, 2021. Here, the committee itself admitted that elimination of IPAB may create a void in the “appellate resolution of cases,” potentially necessitating the transfer of cases to “commercial or High Courts,” thereby exacerbating case backlog. The Committee also noted that prolonged delays in appointing higher-level officials, coupled with the resulting suspension of IPAB operations, had hindered its optimal functioning. Consequently, the Committee recommended to the government that IPAB should be “reconstituted” with enhanced structural autonomy and reinforced capabilities, alongside the implementation of infrastructure and administrative improvements. Additionally, the prompt “appointment of officials and experienced personnel” was advocated to address these issues effectively.[8]
Specialized IP courts hold the promise of enhancing the caliber of justice, as their specialized competence empowers them to adjudicate disputes drawing from their extensive experience in resolving previous intellectual property conflicts. This specialized expertise assumes heightened significance in intellectual property disputes, where courts frequently face requests for expedited interim relief decisions.
Another benefit of specialized IP courts lies in their ability to stay current with and promptly adapt to evolving intellectual property legislation. Additionally, the court’s specialized proficiency is regarded favorably, given the potential risk in non-specialized courts, where, due to the “technical complexity of disputes,” decision-making responsibilities might be delegated to specialized professionals (appointed by the court or even by the parties), who ultimately assume the role of decision-makers instead of the judges.[9] This factor merits consideration as it appears to be crucial in maintaining the proficiency of a specialized IP court, potentially offering an advantage over non-specialized courts. It plays a pivotal role in preserving the specialized court’s expertise, ensuring that the presiding judges stay well-informed about the latest developments in the legal domain.
- Arguments In Favor Of The Abolition Of The IPAB
Several drawbacks to creating dedicated IP courts have been noted. For starters, the expenses of establishing and maintaining dedicated IP courts are seen as a disadvantage, particularly in nations with a “general lack of resources, a low IP case load, and little IP expertise.”The validity and appropriateness of such expenditures are determined primarily by the caseload and the extent to which these costs may be met by existing resources. The prospective expenses of establishing a dedicated IP court should also include an assessment of the costs of selecting, recruiting, and retaining judges.[10]
Another issue of concern is the susceptibility of a specialized court to potential political or economic influences. This vulnerability arises from the perception that generalist courts often maintain greater independence compared to specialized courts. This risk could materialize even before a judge’s appointment to the specialized court, during the selection process. From this standpoint, it is proposed that generalist courts can serve as a potential safeguard or “antidote” against this risk.[11]
For instance, the IPAB powers grew to be concentrated primarily in the hands of one person, the Chairperson of the IPAB, who was normally a retired judge of a High Court. With the ability to form benches to hear cases and assign cases to benches, the Chairpersons wielded enormous authority over the results of all IPAB litigation. The apparent concern with such concentration of power is that the ideological bent of the IPAB’s Chairperson might determine all IP law flowing from the IPAB for a three-year period (i.e. their statutory tenure). During the IPAB’s existence, there were relatively few situations in which any member of the IPAB disagreed or dissented from the Chairperson’s judgement. Due to administrative issues, the IPAB was unable to carry out its adjudicatory powers. [12]
It is also argued that “judicial specialization diminishes the cross-fertilization of legal concepts.” This aspect of specialized courts has garnered significant attention and has been extensively examined by scholars, who have debated whether and in what circumstances such specialization can be justified. In this context, some argue that the absence of centralization could foster a more vibrant “marketplace of ideas,” while decentralization and diversity might offer more effective conflict resolution mechanisms. [13]
There is also an argument suggesting that if non-specialized judges struggle to grasp the intricacies of IP law, the response should not necessarily be the creation of specialized IP courts but rather reforms to the substantive IP law itself. Furthermore, specialized IP courts have the potential to promote consistency and uniformity in legal interpretations, ultimately benefiting future litigants and society by offering more predictable court decisions and enhancing overall efficiency. However, it’s important to note that uniformity alone should not be the ultimate objective, as “uniformity says nothing about quality or accuracy.”[14]
- Intellectual Property Division of the Delhi High Court: The way forward?
Promoting IP expertise within non-specialized IP courts has been proposed as a constructive approach, especially in developing nations. This approach might eventually lead to the creation of specialized IP divisions within conventional courts. An example of this approach is the US Patent Pilot Programme (PPP), which directed patent cases in 14 pilot districts to judges who volunteered to handle them, thus enhancing these judges’ specialization in patent-related matters. This case illustrates that the process of familiarizing and specializing judges in IP matters does not always necessitate the establishment of dedicated IP trial courts. Therefore, training judges in intellectual property issues can be achieved without the need for the formation of dedicated IP courts. The pivotal focus in IP disputes should be on cultivating judicial expertise, with this endeavor being the primary objective.[15]
In this regard, the Delhi High Court is regarded as a major forum in India for resolving IP rights issues. As after the elimination of the Intellectual Property Appellate Board (IPAB) in April 2021, the IP Division was announced in July 2021 and commenced operational on February 28, 2022.In its first year, the division resolved approximately 600 of the 2,000 cases received by the IPAB. There were 200 original trademark application cases decided, and about 40% of all transferred trademark appeals were resolved. In its first year, the division received 628 new commercial IP claims, while over 500 IP rights issues covering other categories (e.g., cancellations or appeals) were initiated. More than 700 cases were resolved in total, with just 60 appeals filed against these rulings, which might be read as litigants’ acceptance of the quality of decisions delivered. However, as of March 31, 2023, there were over 4,000 IP rights complaints pending, indicating that the first year was both inspirational and problematic. [16]
One characteristic of the IPD Rules is that if the same “trademark or patent” is involved in several lawsuits, the court can combine the procedures into a single trial. In Octave Apparels v. Nirmal Kumar trading as Apricot Fashion Alloy & Anr. [C.O. (Comm.IPD-TM) 352/2022], the IPD bench directed that “a lawsuit filed before the district court pertaining to an identical trademark between the same parties be transferred to the High Court of Delhi to be tried alongside the cancellation action filed before it”. Consolidation minimises court time and expenses for litigants while without jeopardising either party’s rights. A recent case involving copyright (Phonographic Performance v. Lookpart Exhibitions and Events; CS(COMM) 188/2022) highlighted “another unique feature under the IPD Rules through which the court can seek the assistance of an independent expert(s) relating to the subject matter of a dispute.”[17]
The establishment of such a court serves a dual purpose beyond just enhancing intellectual property protection. It also aims to guarantee an efficient and equitable dispute resolution process, overseen by seasoned judges, to the advantage of all involved parties, including “intellectual property proprietors,” “consumers of products and services,” and “society at large.” With governments and businesses forging international connections and collaborations, stakeholders are increasingly becoming both holders of intellectual property rights and consumers of “third-party intellectual property rights,” underscoring the necessity for a “well-balanced system.”
The government’s commitment to specialized intellectual property tribunals conveys a clear message to the public: intellectual property rights will be upheld and enforced. The establishment of such specialized courts raises the prominence of intellectual property rights within a nation, signifying that the government recognizes it as a vital area deserving protection. This heightened awareness of intellectual property rights can lead to the stigmatization of individuals who intentionally infringe upon them, creating social pressure that discourages infringing behaviors. Rights holders can have greater confidence that their intellectual property rights will be safeguarded, thereby fostering artistic creation and innovation. Investments in the arts and innovation benefit society as a whole by instilling confidence in the business and corporate sectors, enhancing the prospects for foreign investment, and ultimately contributing to economic growth.[18]
In conclusion, there is no convincing evidence that specialist IP courts foster innovation more effectively than non-specialized courts in all circumstances. However, it is obvious that adequate knowledge and expertise among courts and judges may considerably improve the quality of justice in intellectual property conflicts.[19] India currently lacks a unified intellectual property court system. With the demise of a tribunal that has rendered important judgements on several occasions, a consistent Intellectual Property redressal system is urgently required. In more recent developments, the High Court of Madras has announced the establishment of an intellectual property division in April 2023. Furthermore, the High Courts of Gujarat and Calcutta have issued particular nomenclature for intellectual property issues. All of these instances point to a shift in the country’s IP jurisprudence. It is genuinely desired that other high courts in the nation would adopt the Delhi IPD approach to guarantee consistency in the adjudication of intellectual property disputes throughout India.
[1] Zimmer, Markus. Overview of Specialized Courts. International Journal for Court Administration. (2009https://www.researchgate.net/publication/285741895_Overview of Specialized Courts/citation/download
[2] Roy, M., & Manchikanti, P. (2017). Analysis of the disposition of IP cases by the Intellectual Property Appellate Board of India.
[3] Khushbu & Akshit Narula, Need for Specialised IPR Courts in India, 5 INDIAN J.L. & LEGAL Rsch. 1 (2023).
[4] Eashan Ghosh, A Case for Tethering Intellectual Property Appellate Board Cases to a Designs Act-Style Framework, 3 NAT’l L.U. DELHI Stud. L.J. 43 (2021).
[5] Id.
[6] Mylan laboratories limited v. Union of India, W.P. (C) 5571/2019 & C.M. Application 24540/2019 26833/2019.
[7] supra note 3
[8] Lamba, H. (2022). Parliamentary Standing Committee Report On India’s Intellectual Property Rights Regime. Mondaq Parliamentary Standing Committee Report On India’s Intellectual Property Rights Regime – Patent – India (mondaq.com)
[9] de Werra, Jacques, Specialised Intellectual Property Courts – Issues and Challenges (March 23, 2016). published in: Specialised Intellectual Property Courts – Issues and Challenges, Global Perspectives for the Intellectual Property System, Issue Number 2: CEIPI-ICTSD. 2016, p. 15-41 , Available at SSRN: https://ssrn.com/abstract=2761209
[10] IBA Survey, p, 37; IIPI Study, p. 7; see also Zimmer, ‘Overview of Specialized Courts’, p. 4; this difficulty may potentially be managed by making it possible for the court to sit and hold hearings in other places so that the court and the judges can move to the place where the litigants are located.
[11] Holmes Grp., Inc. v. Vornado Air Circulation Sys., Inc., 535 U.S. 826, 839 (2002) (Stevens, J., concurring) (‘occasional decisions [on issues of patent law] by courts with broader jurisdiction will provide an antidote to the risk that the specialized court may develop an institutional bias’).
[12] Reddy, P. (2021). The End of the IPAB and Lessons on Concentration of Judicial Powers. SpicyIP. URL The End of the IPAB and Lessons on Concentration of Judicial Powers – Spicyip
[13] supra note 8
[14] Diane P. Wood, ‘Keynote Address: Is It Time to Abolish the Federal Circuit’s Exclusive Jurisdiction in Patent Cases?’, Chicago-Kent Journal of Intellectual Property 13.1 (2013): 1–10, at 3 (http://scholarship.kentlaw.iit.edu/ckjip/vol13/iss1/1); see also Craig Allen Nard and John F. Duffy, ‘Rethinking Patent Law’s Uniformity Principle’, Northwestern University Law Review 101 (2007): 1619–75 (http://scholarlycommons.law.case.edu/cgi/viewcontent.cgi?article=1590&context=facul ty_publications), at 1620: ‘Yet uniformity is not a proxy for quality. That a policy is uniformly applied says very little about its soundness or desirability.’
[15] supra note 8
[16] Kaur, B. (2023). The Delhi High Court IP Division’s First Year Has Transformed Indian IP Jurisprudence. Remfry and Sagar https://www.remfry.com/publications/the-delhi-high-court-ip-divisions-first-year-has-transformed-indian-ip-jurisprudence/
[17] Id.
[18] Zuallcobley, R. W. (2012) Study on Specialized Intellectual Property Courts. International Intellectual Property Institute.
[19] supra note 8
