Intellectual Property and Media & Entertainment
Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021
Earlier this year, the Government introduced The Tribunals Reforms (Rationalisation and Conditions of Service) Bill, 2021 (‘Bill’). The Bill created buzz as it sought to abolish many tribunals in the interests of delivering speedy justice. It mentioned that tribunals merely add an additional layer to litigation, thereby leading to delay in final disposal of matters. Since the Bill could not be taken up for consideration, the President of India, exercising his powers under Article 123 of the Constitution of India, has promulgated the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021(‘Ordinance’) which has come into immediate effect from 4 April 2021.
Pursuant to the Ordinance, certain provisions of IPR laws have been amended/deleted/substituted which has effectively abolished Intellectual Property Appellate Board (‘IPAB’) and the Film Certificate Appellate Tribunal (‘FCAT’).
The IPAB was originally constituted by the Indian Government to hear and resolve appeals against the decisions of the registrar under the Trad Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. Subsequently, the IPAB has been authorized to hear and adjudicate upon matters Patents Act, 1970, Copyright Act, 1957 and Protection of Plant Varieties and Farmers’ Rights Act, 2001.
The Ordinance abolished the IPAB as a result of which disputes for trademarks, copyrights and patents would be adjudicated in the manner set out below.
- Rectification proceedings under the relevant provisions of the Trade Marks Act, 1999 (‘Trade Marks Act’) can now be filed before the appropriate High Court having jurisdiction, in addition to the Registrar of Trade Marks.
- In relation to such proceedings the Ordinance amends the Trade Marks Act and the High Court may prescribe its own rules, in addition to the rules made under the Trade Marks Act. It is unclear what additional rules the High Court may stipulate.
- Appeals from orders of the Registrar of Trade Marks will now lie with the appropriate High Court (depending on the jurisdiction of the Registrar passing the orders), and must be filed within 3 months from the date on which the order was communicated to the appellant.
- In addition to the Registrar of Trademarks the High Court may intervene in (a) imposing limitation on color; (b) matters pertaining to distinctiveness of a trademark; (c) security for the costs of proceedings relating to oppositions / appeals; (d) determination of whether use of a registered associated trademark is equivalent to the use of another registered mark; (e) direction to the Registrar to rectify entries in the register; and (f) disputes with relation to use of registered trademarks in company names, etc.
- All appeals from the decisions of the Registrar of Copyright, as well as applications for rectification of the Copyright register shall now lie with the High Court. Since the Copyright Office (from where the Registrar operates) is only in Delhi, it appears that only the High Court of Delhi may have jurisdiction over such appeals and rectification proceedings.
- Appeals must be filed within 3 months from the date of the order. For calculating this period, the time taken in granting a certified copy of the order or recording the decision will be excluded.
- These appeals will be heard by a single Judge of the High Court and if the single Judge deems fit, the appeal may be referred to a Bench of the High Court at any stage. A further appeal from the order of a single Judge may be filed with a Bench of the High Court, within 3 months from the date of such order.
- Certain disputes to be decided by the IPAB, such as those relating to assignment of copyrights or compulsory/statutory licenses (for works withheld from the public, or unpublished and published works, for cover versions, certain broadcasts, etc.), or those in relation to whether a work has been published, date of publication of a work, whether term of copyright in India is longer than the term for such work in any other country, will now lie with appropriate Commercial Courts (i.e. a Commercial Court or the Commercial Division of a High Court under the Commercial Courts Act, 2015). Unlike the amendments for trademarks, it appears that certain types of copyrights related actions can only be instituted before Commercial Courts. It is currently unclear from the Ordinance, how jurisdiction for disputes / applications under the Copyright Act, 1957 will be ascertained.
- All provisions in relation to appeals to the IPAB, under the Patents Act, 1970 (‘Patents Act’) have been completely omitted and all appeals from the decision/order/direction of the Controller of Patents will now lie with the High Court.
- A rectification or revocation action under the relevant provisions of the Patents Act would now have to be filed before the appropriate High Court.
The Ordinance stipulates certain transitional provisions which prescribe that matters pending before the IPAB, prior to the Ordinance, will stand transferred to the relevant High Court, in the same manner as they would have been filed, had this Ordinance been in force on the date of filing. Further, the appropriate High Court may deal with cases from the stage at which they stood before such transfer, or from any earlier stage, or de novo, as it deems fit. This means that irrespective of the stage of the pending matter, the High Court having jurisdiction may, at its discretion, require the appellant / petitioner, to commence such matters afresh.
FCAT was a statutory body set up by the Ministry of Information & Broadcasting in 1983, under Section 5D of the Cinematograph Act, 1952. Its primary job was to hear appeals filed under Section 5C of the Cinematograph Act, by applicants for certification aggrieved by the decision of the Central Board of Film Certification (‘CBFC’). The tribunal was headed by a chairperson and had four other members, including a secretary appointed by the Government of India and headquartered in New Delhi. The abolition of the FCAT means filmmakers will now have to approach the High Court whenever they want to challenge a CBFC certification, or lack of it.
The Ordinance has been issued despite numerous representations from stakeholders to keep the IPAB operational. It is unclear whether High Courts, with their existing backlog, and absence of technical members (especially in the case of patent matters), will be able to shoulder the weight carried by the IPAB for the past 18 years.
The result of this shift is that the matters pending before the IPAB for past several years are likely to get further delayed. It also remains to be seen how jurisdiction issues, and procedural issues surrounding transfer of the large volume of existing cases from the IPAB to the relevant High Courts, will be dealt with by the Government.
With respect to films, appealing to the High Courts for matters on censorship may be arduous for filmmakers and also lack speed as the courts are already overburdened.
Globally alternate dispute resolution is encouraged – efforts are made to remove the caseload from an already burdened court system for speed and efficacy. The intent of the government in taking this step is unclear.