1. Intellectual Property Appellate Board [IPAB] Procedures by Vinoth Khanna S R Research and Publications Division Altacit Global

3. Establishment of IPAB September 15, 2003 – Constitution of IPAB December 05, 2003 – Functional To hear and adjudicate appeals against the decisions of the registrar under the Indian Trademarks Act, 1999 and the Indian Geographical Indications (G.I.) of Goods ( Registration and Protection) Act, 1999. Extended to Indian Patents Act, 1970 – since April 02, 2007 – to hear and adjudicate upon appeals from most of the decisions, orders or directions made by the Patent Controller. Vide Notification – all pending appeals from Indian High Courts under the Patents Act were to be transferred to the IPAB from April 02, 2007.

4. Establishment of IPAB (…contd) Object of IPAB: Speedy disposal of Appeals and Rectification of Applications. Rules made by IPAB: The Intellectual Property Appellate Board (Procedure) Rules, 2003 were made by Intellectual Property Appellate Board to regulate its procedures in exercise of powers conferred upon it. Headquarters: Chennai Sittings: Chennai, Mumbai, Delhi, Kolkata and Ahmedabad.

5. Jurisdiction of Intellectual Property Appellate Board The IPAB has two types of Jurisdiction: a) Original Jurisdiction: In matters of rectifications of the register of Trademarks/Geographical Indications/Patents. b) Appellate Jurisdiction: In as much as it can hear and decide appeals from an order or decision of the Registrar/Controller. The decision of the Board shall be final and binding.

6. Who Can Appeal to IPAB An application or an appeal against any order of the Registrar/Controller can be made to the Appellate Board by any aggrieved person. Aggrieved Person: any person who - a)is in some way or the other substantially interested in having the trademark/G.I. removed from the register OR b) would be substantially damaged if the trademark/G.I. remained Note: The meaning of the word should be liberally construed but at the same time it should be made sure that there should be a direct link between the person and the grievance.

7. Manner of Making Applications and Forms of Appeal Application for Rectification to the IPAB shall be made in Form 1. Appeals from the order or decision of the Registrar, for goods or services falling in one class - In Form 2 Appeals from the order or decision of the Registrar, for goods or services falling in two or more classes- In Form 3 Appeals from the order or decision of the Registrar, in regard to Registration or Removal of Trade Marks Agent from the Register - In Form 4 Application for condoning the delay in filing appeal – Form 5

8. Procedure for Applications & Appeals before IPAB The application shall be filed in the Form 1. b) An appeal from any order or decision of the Registrar of Trademarks/Geographical Indications or the Controller of Patents shall be filed in the Forms 2, 3 or 4.

9. Flowchart of the Procedure

10. Filing the Application or Appeal Following are the points which should be noted while filing the application or appeal: a) Prescribed Fees - Bank Draft payable at Chennai in favour of Deputy Registrar, Intellectual Property Appellate Board. b) Application or Appeal shall be filed in: - in 3 sets; - in a paper book form; - along with empty file size envelope bearing full address of the respondent. c) Application or Appeal sent by post - day it was received by the registry. d) Defect (not formal) not rectified in 15 days - Abandoned.

11. Filing Procedures for Application or Appeals A] In case of Application for Rectification or Removal from Register 1. Applicant - Full Name of the Applicant - Address of place of business in India or - Address for service in India, if the above is not there. - Authorization in favour of the representative of the applicant. 2. Registered Trademark /G.I. - Official No. of the Trademark [TM] / G.I. - Name and address of the owner of the Registered TM / G.I. - Class. in which the TM is registered. 3. Manner in which registered TM / G.I. to be rectified. 4. Grounds of application.

12. Filing Procedures for Application or Appeals (…contd) B] In case of Appeal filed against the order of the Registrar/Controller: Appellant - Full name - Nationality - Address - Address of Registered Office of the appellant, in case of a Company Respondent - Full name - Nationality - Address - Registered Office of the respondent or official address for service of notice Details of Appeal: - Number, Date and Authority which passed the order against which appeal is filed - Declaration by the appellant about the Jurisdiction of the Board - Declaration by the appellant that the appeal is within Limitation period - Concise Facts of the case - Grounds for relief with legal provisions - Declaration by the appellant that the matter is not previously pending before any court - Prayer Clause - Particulars of the Bank Draft through which the fees is paid - List of enclosures - Verification

13. Flowchart of Procedure for Hearing

14. Review of an Order Review can be made from the order of the IPAB. Review petition: - should be in Triplicate. - in Form 6 - within 2 months of the communication of the order to parties - should be accompanied by the grounds of the review.

15. Procedure for Review Registry shall forward the petition and statement to the respondents to the petition Respondents may file counter statement within 2 months Review petition shall be posted for hearing, before the bench of Chairman.

16. Powers of IPAB a) Not bound by Civil Procedure Code [CPC]. b) Natural Justice. c) Make own rules. d) All powers of High Court in respect of the following matters - receiving evidence - issuing summons - requisitioning any public record - any other matter which may be prescribed e) Will have exclusive jurisdiction.

17. Plausible Questions Primary purpose for the establishment of IPAB? To provide an appellate forum to expeditiously adjudicate upon appeals from the orders or decisions passed by the Registrar of Trademarks/Geographical Indications and the Controller of Patents. Bench? A Judicial Member and a Technical Member. Transfer of Cases? Chairman has the power to transfer cases from one bench to another. Applicability of CPC? Why? Not applicable to the proceedings before the IPAB. Procedural compliance used to consume much time which resulted in delayed disposal of the appeals. Simplified Rules and freedom from CPC ensure faster disposal of matters before the IPAB for the convenience of the litigants. Ex-Parte injunctions? No ex-parte injunction is possible in proceedings before IPAB. Only on adjudication of merits. Appeals from IPAB? Orders passed by the IPAB are subject to appeal before the High Court. Appeals from infringement proceedings? Solely under the High Court’s jurisdiction and IPAB has no statutory power to try infringement proceedings. Exceptions? Orders passed by Central Government of India with respect to inventions pertaining to defense purposes, including directions of secrecy in respect of such inventions, revocation if the patent is contrary to prejudicial to public interest, or pertains to atomic energy, from the purview of appeal to the IPAB.

18. Plausible Questions (…contd) IPAB has Appellate Jurisdiction in matters pertaining to? 1. Refusal of application for failure to comply with provisions of the Act 2. Orders relating to divisional application 3. Orders relating to dating of application 4. Decisions relating to anticipation 5. Decisions and cases of potential infringement 6. Decisions relating to substitution of applicants 7. Decision to amend/revoke patent 8. Decisions related to inventor names 9. Directions given to co-owners of the patent 10. Decisions related to Patent of Addition 11. Decisions related to amendment of application and specification 12. Decisions related to restoration of lapsed patents 13. Decisions related to surrender of patents 14. Revocation of patents in public interest 15. Registration of patent assignments 16. Correction of clerical errors 17. Decisions related to compulsory license of a patent 18. Decisions related to revocation of patent for non-working.

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