“It was definitely a surprise” – Justice Manmohan Singh reacts to IPAB abolition in exclusive interview

• IAM runs interview with influential figure in India’s IP sector, Justice Manmohan Singh
• Claims there are “pros and cons” for transferring matters to the high courts
• Says creation of a specialised IP bench “long overdue and would be “helpful”

In an exclusive interview with WTR’s sister title IAM, one of the most influential figures in India’s IP sector, Justice Manmohan Singh, has provided his reaction to the surprise abolition of the Intellectual Property Appellate Board (IPAB) last month, as well as his thoughts on how the high courts will handle the significant IP caseload.

Last month, the Indian government promulgated the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance 2021, effectively abolishing India’s IP Appellate Board (IPAB) and transferring its functions to the country’s commercial and high courts. At that time, a local IP expert told WTR that the move is “a regressive step” and warned over the possible cost and timeliness implications.

The IPAB was formed in 2003 to hear appeals against decisions of the registrar under, among other things, the Trademarks Act 1999. Under the new ordinance, the powers that had resided with the IPAB in regard to trademarks, patents and geographical indications were transferred to the respective high courts. In a subsequent guest post, a local practitioner claimed “there may be chaotic situations” due to the development.

Now, in an exclusive interview with IAM’s Asia-Pacific editor Jacob Schindler, Justice Manmohan Singh shares his perspective on the abolition. Singh boasts a distinguished three-act career spanning 40 years, including time as a Delhi High Court judge. After retirement, he took the reins at the IPAB, which heard appeals from India’s IP offices until the role came to an end in February.

Below are a couple of highlights from the IAM interview (click here to read the full article):

What was your reaction to the news that the government had decided to abolish the IPAB with immediate effect via promulgation?

It was definitely a surprise for all the functionaries of the IPAB, including myself.

As a retired high court justice, what are your thoughts on all IPAB cases being shifted to the high courts?

I believe that the IPAB is an expert body and the subject area per se requires technical expertise for the in-depth appreciation of the facts and the nature of the intellectual property involved. Therefore, I feel that technical expertise and teamwork produce efficient results. I am a believer that technical members are required for each kind of IP right. Only in this way can we have robust  judgments on both facts and law.

So far as shifting the matters before the high courts is concerned, I am of the view that there are positives to this as there is always a judge there to attend those cases pursuant to transfer. However, as I said, the nature of IP cases is such that they require continuous monitoring, disposition, expertise and in-depth involvement. I feel that when IP cases are merged in with the ordinary roster of commercial cases, the priorities of the courts become diverse and the level of urgency that an IP matter might receive in a specialised body may wither away.

Moreover, the availability of experts where cases are scattered all over India will be difficult; even if a court does have an IP bench, it may still not be able to call on so many specialists, who can assess technical propositions in minutes, which saves time and costs, and leads to efficiency.

Overall, there are pros and cons for transferring matters to the high courts. I feel that the rapid pendency of cases in the high courts due to the covid-19 situation raises further concerns and it would have been better if the IPAB had continued, in view of the fact that it is an expert body that was functional until recently and had a swift disposition rate.

Would the creation of an IP specialist bench within the Delhi High Court and/or other high courts be a logical next step after the abolishment of IPAB?

I am of the view that the creation of a specialised IP bench is long overdue and would be really helpful for swift decisions in civil cases requiring the urgent relief of injunctions or interlocutory orders. However, I feel that this would not dispense with the need for a specialised tribunal to hear cancellation cases and appeals against the orders of registrars and controllers. One cannot substitute for the other. Both the courts, functioning as specialised IP benches, and tribunals like the IPAB, as expert bodies, have different roles to play. The role of both should be kept separate for greater efficiency.

This is a small snippet of IAM’s in-depth interview with Justice Manmohan Singh.