ORA/7/2012/TM/DEL. Case: M/s. Shreedhar Milk Foods Pvt. Ltd. Vs Mr. Vikas Tyagi and The Registrar of Trade Marks. Intellectual Propery Appellate Board Cases
| Case Number | ORA/7/2012/TM/DEL |
| Counsel | For Appellant: Shri. K.G. Bansal & Co. and For Respondents: Shri. U.S. Sharma |
| Judges | Prabha Sridevan, Chairman, Usha, Vice Chairman and D.P.S. Parmar, Member (T) |
| Issue | Code of Civil Procedure, 1908 (CPC) - Rules 3, 39; Code of Civil Procedure, 1908 (CPC) - Section 151, 95; Constitution of India - Articles 226, 227; Copyright Act, 1957 - Sections 30, 31, 31(1)(b), 75; Income Tax Act, 1961 - Section 255(5); National Green Tribunal Act, 2010 - Section 19(4)(i); Patents Act, 1970 (39 of 1970) - Sections 115, 116,... |
| Judgement Date | July 08, 2013 |
| Court | Intellectual Propery Appellate Board Cases |
Order:
Prabha Sridevan, Chairman
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Two Larger Benches of the IPAB were constituted recently to decide two issues one relating to the IPAB's power to review its own order and the other relating to IPAB's power to grant interim orders pending final application. In both, we had to consider the importance of this Tribunal and the nature of its jurisdiction, power and authority. This order relates to the power to grant interim orders. The applicant in ORA. No. 7 of 2012 moved an Application for interim stay of the registration of the respondent's Trade Mark on the ground that it was obtained by fraud.
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The learned counsel appearing for the applicant relied upon various decisions of the Court earlier, wherein interim stay was granted. He also referred to Indian Bank Vs. Satyam Fibres (India) Pvt. Ltd. (AIR 1996 SC 2592) and Grindlays Bank Ltd. Vs. Central Government Industrial Tribunal and Others (AIR 1981 SC 606) in support of his contention that every Tribunal should be considered to have such power ancillary or incidental as are necessary to do justice in a case where if prima facie case is established, stay must be granted.
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The learned counsel for the respondent vehemently opposed for granting stay on the ground that IPAB has no power to grant stay.
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We could have decided the matter as an issue that had arisen inter se parties in that particular case. But, whatever we decide, it would apply, not only to the proceedings under the Trade Marks Act, 1999 but also to proceedings under the Patent Act, 1970 and under Geographical Indications Act, or under any other Act, which is brought under the IPAB umbrella in the future. Therefore, we felt that it may not be fair to decide such an important question in the absence of Members of the Bar who practice in Patent Law or in Geographical Indications proceedings. Since there had been varying views of this Board, we thought that we should constitute a Larger Bench and we issued directions for constituting a larger Bench which was published in Website, where we invited Members of the Bar to appear as interveners. We had also observed that if no intervening application was filed, we would appoint an Amicus Curiae to assist us. But the response from the Bar has been enthusiastic. In fact, arguments were made over two days at New Delhi and again by a special request on one day at Chennai. We are extremely grateful to the Members of the Bar for this comprehensive and well researched assistance each one gave as amicus to help us to decide this purely legal issue. The following learned Advocates appeared before us:-
Mr. S.K. Bansal, Mr. Sushant Singh, Mr. Sanjeev Tiwari, Ms. Prathiba Singh, Mr. M.K. Miglani, Mr. Amarjit Singh, Ms. Rajeswari, Mr. S. Majumdar, Mr. Peeyush Kalra, Mr. Anil Dutt, Mr. Ajay Sahani, Mr. U.S. Sharma, Mr. Shalien Bhatia, Mr. Sidharth Bambha, Mr. N. Mahabir, Mr. Praveen Anand, Mr. M.S. Bharath and Mr. D. Solomon. Intervening Applications were filed by Subhatosh Majumdar @ Majumdar & Company for Shreedhar Milk Foods Ltd.,
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Written arguments were also filed by the learned counsel to supplement their oral arguments. Written submissions were filed by M/s. Y.J. Trivedi on behalf of himself and the Intellectual Property Rights Bar Association at Ahmedabad, who could not be present in person.
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At the outset, objections were raised to the Constitution of the Larger Bench on the ground that this Board has no jurisdiction for such a reference. In an order of the Central Excise, Customs and Service Tax Appellate Tribunal, a question arose whether the exemption provided in the Notification covered cannulae for the distance part of veins and blood vessels and it is limited to cannulae for iota and ventricle and similar veins and blood vessels whether the term "Blood Vessels" have to be read separately. The Bench decided that a reference to a Larger Bench cannot be made merely on the ground that the Division Bench desired the issue to be decided by a Larger Bench and therefore, there is no justifiable ground for reference. The reference was returned. This was relied on to show that the reference to the Larger Bench was without jurisdiction. In fact, M.P. No. 138 of 2013 was filed on the question whether the Appellate Board has power to refer the matter to Full Bench. Section 83 gives the Appellate Board jurisdiction power and authority, which shall be exercised by the IPAB in accordance with the Act.
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It was submitted that neither did we have the power to constitute a Larger Bench, nor did we have the power to invite intervention of lawyers as third party interveners and Section 84 was referred to, which relates to the constitution of Appellate Board and in the absence of statutory provisions, empowering the Chairman or the Bench of the Appellate Board, the present argument was illegal. It was also submitted that Rule 15 of IPAB procedures Rules relates to the intervention by third party, in appeals filed under Section 91 of the Trade Marks Act, 1999 and therefore, allowing intervention by third parties is contrary to the provisions of Rule 15, and it creates a bad precedent. It is further submitted that the Larger Bench which passes orders will not decide the present jurisdictional issue judicially and impartially. In view of the fact that the coordinate Benches of the IPAB had passed stay orders staying registration of Trade Marks without considering Section 95, and for a fair and impartial application of mind, the matter should have been referred to the Hon'ble High Court under Article 227 of the Constitution of India and not by invoking the quasi-judicial power of the Tribunal. These objections were raised in relation to our power to constitute a Larger Bench to decide the issue in question.
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Consistency and certainty are recognized as being central requirements for the Rule of law, since it provides those subjects to it with the ability to organize their affairs in a manner as not to violate the law. Therefore, it is in the interest of justice and the parties before us and the counsel, who advise them, that everyone knows with a degree of certainty whether the application for grant of interim order/review will be entertained by this Board. That cannot be left to the vagaries of the individual cases.
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Of course, whether the petitioners succeed in their prayer will depend upon the facts of each case. What we are concerned with the existence of the power with the IPAB to entertain the review petition/petition for stay or injunction. It is also desirable again in the interest of this jurisprudence that since this Board has a country wide jurisdiction, the same position is adopted in all matters regardless where IPAB is sitting in that particular case. This decision may not be final; it may be taken for being tested before the Superior Courts. The final decision will bestow a certainty to these two issues and will be applied uniformly in all IPAB proceedings throughout the country. It is with a view to give a degree of certainty and consistency to these two questions that we referred the matters to Larger Bench. We saw that, earlier there had been difference in the views of Benches of equal strength. At least now the regular benches of the Board will be bound by this decision as long as it holds the field.
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First we will refer to the submissions made by the Members of the Bar, which were in favour of the proposition that the IPAB has the power to grant interim orders. It was submitted that as per Section 95 of the Trade Marks Act, 1999 there was nothing contained in the language of Section 95 of the Trade Marks Act, to exclude the IPAB's power to grant interim orders in the original application. Section 95 modulates the manner in which interim orders in appeals may be heard and therefore it must be understood that these restrictions cannot be applied to the original application. It cannot be understood that there is no power to pass interim orders. It was submitted that the registration of the Trade Mark itself is not a complete right. Under Section 31, it is only Registration to be prima facie evidence of validity and therefore, IPAB hearing the rectification application has inherent jurisdiction to decide the validity and invalidity. Section 28 of the Trade Marks Act shows that the IPAB has plenary power to look into to the registration even at the interim stage.
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The learned counsel referred to the decision reported in Grindlays Bank Vs. Central Government Industrial Tribunal and Others (AIR 1981 SC 606) and submitted that this decision applies to all the Tribunals. It was submitted that merely because, the Act render interim orders in appeals, it cannot be read as excluding interim orders in application. There is no such explicit exclusion, indications in fact are to the contrary. In State of Orissa Vs. Madan Gopal Rungta (AIR 1952 SC 12) relied on by the counsel Hon'ble Supreme Court held that in cases of fraud and such extreme circumstances, the Tribunals are inherently clothed with jurisdiction to recall the orders obtained by means of fraud and to grant stay. In Indian Bank Vs. Satyam Fibres (India) Pvt. Ltd. (AIR 1996 SC 2592) the Hon'ble Supreme Court held the principle that the power of review where fraud is alleged springs not from the legislation but from the nature and constitution of Tribunals. Section 59(3) of the Trade Marks Act, 1999 gives the Board's power to decide any question that may be necessary or expedient to decide the issue in connection with the rectification of the registration. It was submitted that the word 'Expedient" can only mean to meet the ends of justice and therefore, the power to grant interim orders is inherent.
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Similar power of stay is granted to the Board under Section 71(2) of the Patents Act, 1970. MSM Discovery Pvt. Ltd. Vs. Viacom 18 Media Pvt. Ltd. & Others (2011 (2) CLJ 658), was relied on, wherein the Delhi High Court dealt with the question whether the Civil Court in TDSAT case had the...
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