28 Jul
2021

“An ambitious landmark” – parliamentary panel in India calls for urgent revival of Intellectual Property Appellate Board

  • India’s Parliamentary Standing Committee on Commerce releases IP reforms report
  • The report, released every 10 years, calls for major changes to India’s IP environment
  • Local expert says report is “ambitious” and makes “landmark recommendations”

The Indian government’s bipartisan Parliamentary Standing Committee on Commerce has released a new report focused on proposed reforms to India’s IP rights regime. As well as calling for ambitious improvements that would have a significant impact on trademark practitioners, the committee urges that the recent abolishment of the Intellectual Property Appellate Board (IPAB) be reversed.

The new report, called 'Reforms to the Indian Intellectual Property Rights Regime’, was released at the end of last week by the Parliamentary Standing Committee on Commerce. It comes nearly a decade after the previous report from the committee, and its 153-pages makes various recommendations on every facet of intellectual property in India.

The most pressing recommendation from the committee is in regards to the IPAB. As WTR first reported in February, the lower house of Indian Parliament, the Lok Sabha, introduced a bill that proposed to end certain tribunals and authorities, with the IPAB targeted and proposed for abolition. Despite fierce backlash from local practitioners (including the claim it will be “an impediment to India’s image”), the ordinance was promulgated in April, with the IPAB effectively abolished from that point.

Now, barely three months later, the committee states in relatively strong terms that the abolition of the IPAB was a mistake. The move “should be reconsidered in wake of its pivotal role in adjudication of IPR appeals and cases”, it states, adding that the reverse should occur – it should return stronger than ever: “The overall scrapping of IPAB, which efficiently had been dealing with proceedings involving complex IPR issues, may create a void in appellate resolution of cases leading to their shift to Commercial or High Courts thereby increasing pendency of cases. The committee also opines that inordinate delay in appointment of officials at higher level and the resultant pause in functioning of IPAB affected the optimal performance of IPAB. The committee, therefore, recommends the government that IPAB should be re-established, rather than being abolished and should be empowered and strengthened with more structural autonomy, infrastructural and administrative reforms, as well as ensuring timely appointment of officials and experienced manpower.”

On top of calling for the IPAB to be revived, the report appears to criticise the way it was abolished in the first place. “The committee notes with distress the absence of any ‘judicial impact assessment’, or active consultations with stakeholders, being conducted by the government prior to the abolishing of tribunals under the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021,” the report notes. “It strongly recommends that the government, before scrapping of significant tribunals through an ordinance, should undertake a ‘judicial impact assessment’ along with wide consultations with relevant stakeholders to ensure building a systemic perspective on abolishing an established system in the country.”

Talking to WTR, Ajay Sahni & Associates partner Kritika Sahni says that the committee’s comments are welcome, but doesn’t expect a swift return of the IPAB. Indeed, she notes that courts will be filling the gap, as last week’s development of the Delhi High Court establishing a specialised IP bench. That move, she says, means the Delihi court “has taken the lead in filling the void” left by the IPAB’s abolition and is a “very welcome and timely move”, adding: “We hope more High Courts will follow.”

Outside of the IPAB, the report makes various other recommendations that, if implemented, would be significant. They include:

  • Calling for a general review of IP policy should be undertaken, claiming it is “imperative in the wake of new and emerging trends in spheres of innovation and research which requires concrete mechanisms to protect them as IPRs”;
  • Specific legislation to curb counterfeiting and piracy “to restrain the growing menace of such IP crimes in India”. A key part of that would be determining a method “to estimate the revenue losses being incurred due to counterfeiting and piracy and the level of such crimes being committed in India”, which would help the government “implement corrective measures to curb the rising incidents of such crimes”;
  • Suggesting the curtailing of the time period of filing an opposition against a trademark application from four to two months, during which the application is in public;
  • Pointing out “the cumbersome procedures” related to search and seizure operations in trademark infringements (under Section 115 of the Trademark Act), and calling for them to “be streamlined and simplified for improving and expediting investigations”;
  • Replacing the ‘deputy superintendent of police’ with a lower-ranked officer who will have the powers to investigate offences concerning the infringement of trademarks;
  • Reducing the time period for the registrar of trademarks to give his opinion on an infringement complaint from seven days to 48 hours;
  • Supporting the expedition of the trademark registration process by reducing the period for which a mark shall remain advertised from four months to two months, which is consistent with the position in several other jurisdictions. 

Another key recommendation is for the modernisation of India’s trademark offices. The points raised in this regard are particularly important, says Sahni, and will hopefully continue ongoing innovation efforts. “The trademark office has invested in upgrading its systems over the years,” she explains. “Proceedings, right from the filing stage, office actions, hearings, oppositions – all the way until grant, are nearly 100% digital today. This is actually an achievement, considering several other jurisdictions are still far from achieving effective digital transformation.”

While positive steps have been taken, new technologies provide further opportunity, she adds: “Blockchain can support or even supplant services that the IP office currently performs, such as registering and monitoring IP while also reducing the work of the IPO through automation. Other suggestions include mobile computing which can serve as the vehicle for inclusiveness, enabling connection to IPOs from remote locations previously difficult to reach, and providing applicants with the ability to reach IP offices without traveling physically. With the arrival of 5G, the IPO can devote even more attention to mobile technologies as a means to facilitate the business cycles of emerging entrepreneurs through the use of mobile applications and camera functions as a method of transferring information.”

Overall, the extensive report could prove to be an invaluable tool to help level-up India’s IP ecosystem. The “landmark” recommendations are “ambitious” and “very promising”, Sahni notes, but it is “unrealistic” to expect the government will make major changes quickly. Nonetheless, “the recommendations are considered to be at the highest levels of law and policy making, thus of significant persuasive value”.

With that in mind, the document is a must read for any trademark professionals with an interest in the India market.

Tim Lince

Author | Special Projects Editor

[email protected]

Tim Lince