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| GREETINGS FROM IPAB ON THE INTELLECTUAL PROPERTY DAY On this ‘Intellectual Property Day’ (26th day of April, 2012), IPAB is proud to publish its Annual report for the year 2011. ANNUAL REPORT FOR THE YEAR 2011 · Intellectual Property Appellate Board has been witnessing a steady increase in the number of cases before it. The year 2011 was no exception. 353 new cases – both Trademark and Patent included – were filed during 2011. The winds of change saw several new appointments being made at different levels. Smt. Justice Prabha Sridevan was appointed as the Hon’ble Chairman of the Board on 09/05/2011. Smt. Justice Prabha Sridevan served as the Judge of High Court of Madras for more than ten years from March, 2000 to August, 2010 prior to assuming charge in IPAB. Mr. D.P.S. Parmar, formerly Deputy Controller of Patents, assumed charge as Technical Member (Patents) in IPAB on 04/05/2011. The Head of the Registry of the Board is headed by the Deputy Registrar. Mr. N. Anbazhagan, Assistant Registrar of Madras High Court, took over the reins of the Registry on 05/12/2011 after Mr. G.Vijayaraghavan, the erstwhile Deputy Registrar, demitted office on 01/08/2011. Mr.V.Ravi, formerly Senior Joint Registrar of Trade Marks was appointed as Technical Member (Trade Marks) on 13.12.2011 (He assumed charge on 2.1.2012).
· The Patent Procedure Rules were notified in 2011, which ushered in a new schedule of fee structure.
· IPAB was required to create a logo as per the advice of the Parliamentary Standing Committee. After careful and diligent process of selection, the logo of the Board was released on 15/09/2011, coinciding with the eighth year commemoration of the Board. The slogan “balancing ip-protection” that features below the logo expresses the aim and endeavour of the Board to make IPAB a model tribunal. High-quality scribbling pads with the new logo printed on top were distributed on that day to the members of the Bar. Calendar for the year 2012 depicting the new IPAB logo was also mooted. That apart, IPAB website was revamped so as to bring the dissemination of information instant. However, steps were initiated to bring the website more dynamic and user-friendly. The totally revamped website will be in place in due course.
· Creation of the new logo was not the only change that happened in 2011. The term speedy disposal – an avowed purpose for creation of the Board – acquired a distinctive meaning as the number of disposed cases catapulted from 166 for the year 2010 to 274 during the year 2011. The achievement will be better appreciated keeping in mind that the Trademark and Patent Benches could not be constituted for four months and five months respectively due to absence of incumbents. Hence, the disposal figure of 274 is the output of just about 7 to 8 months. Further, it is pertinent to mention here that the speedy disposal has been achieved despite the problems ranging from poor inadequate infrastructure to paucity of manpower.
· In 2011, Circuit Bench Sittings became more frequent, resulting in the increase in disposal of cases.
· 2011 witnessed a significant event. The first G.I. case was listed for hearing.
· On 20.12.2011, an interaction took place in IPAB with officials from various developing nations who participated in Eight Weeks International Training Programme on ‘Intellectual Property Rights and Implications for SMEs’, organized by NI-MSME (National Institute for Micro, Small and Medium Enterprises).
· In December, 2012, a meeting was held in IPAB premises with Bar Members in the presence of the Director, DIPP on the amendment of rules and other few issues faced by the Bar.
· The year 2011 will be remembered as a milestone year as the process of strengthening the Board in all areas took a definitive step with the inclusion of the above in the 12thFive Year Plan by the Ministry. The process of preparing a Detailed Project Report has commenced in the year 2011.
· Important orders such as, Yahoo Case, Infosys case, Anandabhavan case, Brooke Bond Tea case, etc. were among the orders pronounced during 2011 and other orders pertaining to procedural aspects regarding leave of court under Section 124, granting of time under IPAB Rules, were also passed.
· The problems that continue to afflict the Board were highlighted before the Hon’ble First Bench of the High Court of Madras in a PIL filed by a professor in Intellectual Property Rights, West Bengal National University of Juridical Sciences, Kolkata (W.P.No.1256 of 2011). The Hon’ble High Court has, by way of interim order, directed the Central Government to make available good infrastructure to the Board to ensure proper functioning. The Central Government has indicated its willingness to allow IPAB to hire a bigger accommodation till a regular infrastructure is available. The Board is in the process of finalizing a suitable accommodation. The PIL is still pending.
· We shall be failing in our duty, if we do not mention the excellent co-operation from Bar Members. But for that, the disposal at the desired level would not have been achieved.
· To conclude, the year 2011 turned out to be an eventful year holding out promises for steady progression in its stature in the years to follow.
***** ************************************************************************************************************ INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-600018 Tele: 24328902/03 Fax: 24328905 Website: http://www.ipab.tn.nic.in
NO: A-36013/1/2003-IPAB/CH Dated: 10.4.2012 CIRCULAR
Intellectual Property Appellate Board (IPAB) invites applications from suitable candidates for the following services in IPAB Chennai on contract basis:
1. One post of Clerk with monthly remuneration for Rs.12000/- (Consolidated) Qualifications: 12th Pass with knowledge of computer and typewriting.
2. Two Peons with monthly remuneration of Rs. 8000/- each (Consolidated) Qualifications: 10th Pass with good experience in records keeping.
Applications with Bio-data may be sent to Deputy Registrar, Intellectual Property Appellate Board, Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-18 within 15 days from the date of Circular.
DEPUTY REGISTRAR To 1) The High Court Notice Board (With covering letter to the Registrar General, High Court, Madras – with a request to place it on the Notice Board). 2) Man Power Agencies. 3) IPAB Website. ************************************************************************************************************
Written submissions on final hearing
After oral arguments, counsel request that they may be permitted to file written submissions. Considering the same, all practising lawyers are requested to have their written submissions ready, if so desired, when they commence their arguments at the time of final hearing itself, so that the oral submissions can also be based on and with reference to the written submissions and the Board need not wait for the written submissions/reply submissions to be filed after the arguments are completed. The co-operation of lawyers will greatly be appreciated.
By order (Deputy Registrar) 2nd April, 2012 ************************************************************************************************************ PROPOSED TOUR PROGRAMME FOR May – December, 2012 The Circuit Sittings for the Period May – December, 2012 are given below:
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GENERAL INSTRUCTIONS
It is heartening to note that filing of Form 3 has been drastically reduced. This means that the members of the Bar have taken the instructions posted on the website seriously. This is appreciated.
2. Normally appeals/applications will be taken up for hearing in the chronological order. But if pleadings are complete and the counsel are ready to argue then the chronological order may not be strictly followed since expeditious disposal is the object.
3. The Board has decided that while sitting at the Principal Seat at Chennai, Thursday and Friday will be kept free for hearing matters from Mumbai, Kolkata , Ahmedabad and Delhi so that in matters which require urgent orders or extensive arguments both counsel may file a joint memo for hearing at Chennai.
4. It is seen that miscellaneous petitions for filing additional documents or for other reliefs are filed on the eve of the date on which hearing is fixed. The other side necessarily will take time to file their reply. Sometimes counsel for the other side may not be local counsel and at a considerable expenditure to their clients they come prepared to argue the matter along with junior counsel or the instructing counsel. If additional evidence is absolutely necessary, the petition for reception of the same may be filed atleast two weeks prior to the date on which the hearing is fixed. Any last minute application will be entertained on payment of actual cost to the other side if it is a case of counsel who have come from outside or on payment of exemplary costs. It is necessary for everyone to understand that this Board was set up only for expeditious disposal of Intellectual Property disputes. Any practice that is counter productive to this object must be discouraged.
5. It is also found that pleadings are signed sometimes by the advocate who has entered appearance on behalf of the party. This is not ethical and is contrary to law. In 1989 (1) LW 543 Nagarajan.V.P. v. Prabhavathi the Hon’ble Madras High Court has soundly criticized this practice as follows: “In recent times, an unhealthy practice has grown up among the members of the Bar to come out with affidavits in support of their clients even without the clients themselves filing affidavits setting out the facts. Unfortunately the implications and consequences thereof have not been realized by them. Under Order 19, Rule2, C.P.C., affidavit will be evidence in an application and the Court could order cross-examination of the deponent. Thus the advocate who files an affidavit in support of an application is liable to be cross-examined and by filing the affidavit, he takes the role of a witness.
The Bar Council of India has framed rules under Section 49© of the Advocates Act, 1961. The indiscriminate way in which affidavits are filed by counsel on records nowadays make the Court doubt whether any of them is aware of the above rule.”
It must be remembered that if the other side attacks the pleadings as false or the evidence as forged and summons the advocate for cross-examination, a member of the Bar runs the risk of being charged with perjury. In the interest of the members of the Bar, it is requested that this practice is discontinued right away.
3. The members of the Bar are also requested to exercise some caution while entering appearance on behalf of a party so that any occasion for conflict of interest does not arise. Recently a litigant appeared before the Board and complained that the counsel appearing for the other side had originally appeared for him before the Trade Marks Registry. This too has to do with professional conduct and little discipline and care on the part of the members of the Bar will go a long way in raising the standard of excellence in the profession. ******************************************************************************************************* PROPOSED TOUR PROGRAMME FOR January – April, 2012 The Circuit Sittings of the Board for the period January – April, 2012 are given below:
(By Order) Deputy Registrar 20th December 2011 ************************************************************************************************************
Announcement on extension requests
The Members of the Bar are aware that the practice hitherto has been to file numerous Form-3 requests for extension of time without any justifiable reasons. Therefore the Board started imposing heavy costs to curb this practice. Some of the Senior Members of the Bar have made a request that hereafter they would not seek repeated extension of time and the Board may not impose such heavy costs. They also said that it is only because until now, requests for extension of time were freely granted that they had taken advantage. They have given an assurance that without justifiable reason, they would not seek such extension. Therefore, the Board has accepted the counter statement/reply or other documents filed within the time so extended, though the costs stipulated have not been paid. But it is made clear that hereafter any unreasonable delay will result in costs being imposed.
(By Order) Deputy Registrar 22nd November 2011 *******************************************************************************************************
MUMBAI CIRCUIT BENCH SITTING (28-11-2011 to 2-12-2011) INTIMATION OF VENUE OF HEARING
It is informed that the venue of Circuit Bench sitting of Intellectual Property Appellate Board to be held at Mumbai from 28.11.2011 to 2.12.2011 has been changed from 4th Floor, Annexe Building, High Court, Bombay-400032 to Court Room No. 15, 2nd Floor, High Court Annexe Building, Bombay-400032. (By Order) Deputy Registrar 4th November 2011
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Guidelines issued by Intellectual Property Appellate Board
Ø Pleadings shall be brief and not argumentative. The legal provisions and the extracts from decisions shall not form part of the pleadings. They should not be repetitive. Pleadings must be verified by the party and not the counsel. Repetition of pleadings shall be avoided while filing Miscellaneous Petitions to avoid wastage of paper.
Ø It shall be typed on foolscap green sheet on both sides having 5cm margin on either side. All the documents filed into the Registry shall be of the same size.
Ø No change of Vakalat shall be accepted without the consent from the earlier counsel. This is a matter of professional courtesy, etiquette and ethics. The members of the Bar are requested to cooperate in this regard.
Ø The counsel shall ensure that the paper book containing pleadings shall be numbered before serving on the other side so that the paper book filed in the Registry and the paper book with the counsel on both sides are identically paginated.
Ø The address for service in India of the respondent must be given, if the respondent resides/carries on business outside India.
Ø Counter statements are not normally filed in appeals. The Rules are proposed to be amended suitably. The members of the Bar are requested to cooperate in this regard and be ready to argue the appeal after service of notice and the date of hearing is fixed.
Ø The Applicant shall number his evidence as Exhibit A1, A2 etc. The respondent shall number his documents as Exhibit R1, R2 etc. If any additional evidence is filed along with any miscellaneous petition, that evidence will be numbered continuously with reference to the documents originally filed. E.g. if the evidence filed originally was from Ex. A1 to A20, then the additional evidence will start from Ex. A21. The same method will be followed by the respondent.
Ø Extension of time for filing counter statement/reply shall not be sought on vague reasons. Unnecessary extension will not be granted. The two months’ period provided by law is sufficient, and unless there is a compelling reason no further extension must be sought for and extension beyond actual period of two months will be granted on payment of costs and filing the counter statement/reply on the stipulated date.
******************************************************************************************************* DELHI CIRCUIT BENCH SITTING (20-21 October 2011) PATENT CASES
When the hearing notices of Patent matters for Delhi Circuit Bench Sitting for 20th & 21st October 2011 were sent nearly two months ago, the venue was mentioned as Conference Hall, Boudhik Sampada Bhawan, Plot No. 32, Sector 14, Dwaraka, New Delhi–110075. However, the October 2011 Delhi Circuit Bench Sitting of IPAB will be conducted in Delhi High Court, Court No.17, 1st Floor, (Old High Court Building), Sher Shah Road, New Delhi-110003. The above change in venue may please be noted. (By Order) Deputy Registrar 27th September 2011 *******************************************************************************************************
ADDRESS FOR SERVICE IN INDIA (PATENT CASES)
Sometimes, the Registry receives applications or appeals filed against respondents who do not carry on business in India. The Registry has come across both Applications and Appeals, wherein the Respondent does not carry on business in India. However, the address for service in India in respect of the Respondent as filed before the Patent office in Form 1 is not given. The Registry, therefore, has to effect service on the Respondent directly at the foreign address. Sometimes, the notice is not served for various reasons and those Application / Appeal papers are returned to the Registry. In those circumstances, the Registry is requested by the Postal authorities to collect the returned parcels by paying a specified amount on account of demurrage, etc. There is no provision to collect the returned parcels by the Registry. Further Form 2 of the Patents Appeals & Application to the IPAB Rule 2011 provides for intimation of address for service in India if the applicant has no place of business or of residence in India. The same will be applicable to Respondent also. In view of the above, the Registry may insist on address for service in India, and the applicants / appellants are required to specify the same. If the above is not complied with, the Registry shall issue defect notice. (By Order) Deputy Registrar 23rd September 2011 ******************************************************************************************************* ADDRESS FOR SERVICE IN INDIA (TRADE MARK CASES) Sometimes, the Registry receives applications or appeals filed against respondents who do not carry on business in India. As per proviso to Section 18(3) of the Trade Marks Act, 1999, address for service in India is required to be disclosed in the Application for registration of trade mark when the Applicant or any of the joint applicants does not carry on business in India. The Registry has come across both Applications and Appeals, wherein the Respondent does not carry on business in India. However, the address for service in India in respect of that Respondent as filed before the Trade Marks Registry is not given. The Registry, therefore, has to effect service on the Respondent directly at the foreign address. Sometimes, the notice is served for various reasons and those Application / Appeal papers are returned to the Registry. In those circumstances, the Registry is requested by the Postal authorities to collect the returned parcels by paying a specified amount on account of demurrage, etc. There is no provision to collect the returned parcels by the Registry. Further, there is a statutory requirement in the above Act to specify the address for service in India in respect of trademarks held by those who do not carry on business in India as per proviso to Section 18(3) of the Act.. In view of the above, the Registry may insist on address for service in India, if the applicants / appellants are required to specify the same. If the above is not complied with, the Registry shall issue defect notice. (By Order) Deputy Registrar 13th September 2011 ******************************************************************************************************* CREATION OF LOGO AND SLOGAN
The Intellectual Property Appellate Board has great pleasure in releasing the new Logo and the Slogan. The logo and the slogan express the aim and endeavour of the Board to make it a model Tribunal. The upward slope of the ‘A’ connotes the aim to attain excellence. The national colours have been chosen to show that our adjudication will be rooted in the Constitution and the small balance in the ‘A’ indicates that IPAB will perform its role of balancing the individual interest with the social/public interest. The motto reads as “balancing ip - protection”. (By Order) Deputy Registrar 15th September 2011 ******************************************************************************************************* CANCELLATION OF DELHI SITTING AND RESCHEDULING OF AHMEDABAD SITTING It may be noted that the Circuit Bench sitting at Delhi from 14.11.2011 to 18.11.2011 stands cancelled in view of large representation received from Lawyers regarding their pre-occupation in APAA meeting in Manila, Philippines. RE-SCHEDULE OF AHMEDABAD SITTING:- Circuit Bench sitting from 19.09.2011 to 21.09.2011 has been rescheduled to 17.11.2011 to 19.11.2011 due to administrative reasons.
However, the venue remains the same in Ahmedabad. Sd/- Deputy Registrar 14th September 2011 ******************************************************************************************************* ANNOUNCEMENT REGARDING PATENT RULES The Gazette Notifications in respect of G.S.R. 930(E) and G.S.R. 209(E) with regard to Patent Rules have been issued on 29.11.2010 and 11.03.2011 respectively. The said Notifications are available in our website under the button "Rules of Procedures". So all appeals and applications are to be filed strictly in accordance with the above Notifications. (By Order) Deputy Registrar 16th August 2011 ******************************************************************************************************* ANNOUNCEMENT ON FORM 3 The Hon'ble Chairman has ordered on the issue of filing of Form 3 under Rule 14 of the Intellectual Property Appellate Board (Procedure) Rules, 2003. The said Order is published under the Heading "Order on Form 3" in the website. The said order may be viewed by clicking the button "Orders/Decisions" on the Home Page. (By Order) Deputy Registrar 23rd July 2011 ******************************************************************************************************* It is observed that when case papers are filed in identical matters wherein the same documents are relied on, separate type-sets are filed for each of the appeals/applications. There is no need to file separate type-sets for each of the appeals/applications where the same documents are relied upon. In such cases, a single set of type-set along with an affidavit/memo signed by the party/counsel/agent may be filed to the effect that same set of documents will be relied on for all such identical matters. By this course, usage of extra space can be avoided, as also unnecessary wastage of paper. (By Order) Deputy Registrar 13th June 2011 ******************************************************************************************************* Urgent announcement regarding requests for adjournment of hearing (NEW) As per Rule 18 of the Intellectual Property Appellate Board (Procedure) Rules, 2003, the application for adjournment must be made with prescribed fee fifteen days before the date of hearing. If the Demand Draft does not bear a date, fifteen days prior to the date of hearing, the Board will not accept the Form 5. (By Order) Deputy Registrar 9th June 2011 ******************************************************************************************************* Urgent announcement regarding requests for adjournment of hearing It is made clear that merely by filing Form 5 and paying Rs. 1,000/- per month for adjournment of cases the advocates/parties should not be under the impression that adjournments will be given. The Board has the absolute discretion to grant or refuse adjournment and also give a shorter date for hearing the case. It is therefore made clear that after filing Form 5 and paying the necessary fees, the advocates or their representatives should be present at the Board hearing so that if the parties have any preference regarding the date of further hearing in the case, they may indicate the same in the open court. It is also made clear that once the first notice of hearing intimating the posting of the case is issued, each and every date of subsequent hearing will not be intimated by post. It is therefore advisable that a junior counsel/agent/party is present when the matter is listed. (By Order) Deputy Registrar 7th June 2011 ******************************************************************************************************* PROPOSED TOUR PROGRAMME FOR JUNE – DECEMBER, 2011 It is proposed to conduct the Circuit Bench Sittings of the Hon’ble Board at the following places against the dates indicated in respect of Trade Mark & Patent matters:
******************************************************************************************************* Parties to the proceedings are required to file applications, appeals, documents along with applications and appeals, counter statements to the applications and appeals and replies there to and Miscellaneous Petitions and replies to Miscellaneous Petitions in CDs in duplicate (in PDF format) in addition to hard copies that are being filed before the registry. (By Order) Deputy Registrar 19th May 2011 ******************************************************************************************************* ANNOUNCEMENT REGARDING CONSTITUTION OF BENCH TO HEAR TRADE MARK CASES A D.O. letter has already been sent to the Secretary and Joint Secretary of Department of Industrial Policy and Promotion suggesting certain amendment to the Rules relating to Trade Marks (Removal of Difficulties) Order,2004 . In 2004 a difficult situation arose when the Technical Member tendered his resignation on 30.09.2003 and proceeded on leave with effect from 9.02.2004 with ostensibly no intention of re-joining. At that time a difficulty arose in constituting a Bench for hearing matters in the absence of a Technical Member. A note had been prepared which was approved by the then Chairman and the Vice-Chairman on 10.02.2004. Some paragraphs of the note are extracted hereunder:- “The term "Member" here is to be read in terms of its definition in Section 2(1) (n) which includes a person appointed either as Judicial Member, Technical Member, Chairman or Vice-Chairman. Thus, the term "Technical Member" as defined in Section 2(1) (zd) excludes only Judicial Member and retains the rest including the Chairman and the Vice-Chairman. The term "Judicial Member' in terms of section 2(1) (k) includes the Chairman and the Vice-Chairman. Technical Member as defined in Section 2(1) (zd) too includes the Chairman and the Vice-Chairman as explained above.” “The above leads to a possible view about the provisions of the Act that the Chairman and the Vice-Chairman as Members of the Appellate Board are both Judicial and Technical Members and thus amongst themselves they can validly constitute a Bench, one being a Judicial Member and the other being a Technical Member.” “We understand that steps have been taken to fill up the posts of Technical Members which of course may take some time. Besides, clearing the huge pendency which has been and is being in the process of transferred from the High Courts to IPAB (the earliest case transferred is of 1987), there are certain provisions of the Act which brook no delay. “In view of the above, it is necessary that at least one functioning Bench (one Judicial Member and one Technical Member) is available at all times and there is no gap at any point of time. The scheme of the detailed provisions of the Act as explained above in the preceding paragraphs leads to an unambiguous conclusion that the legislative intention had been to enable the Chairman and the Vice Chairman to function as both Judicial Member and Technical Member.” Thus amongst themselves they can constitute a Bench By way of abundant caution the then Chairman and the Vic-Chairman requested the Ministry to suitably amend the Trade Marks (Removal of Difficulties) notification of 28.04.2004. The above notification does not meet all the possible contingencies that may arise. The language of Rule 2 cannot be understood to restrict the power to form the Bench when there are other reasons for a vacancy in the office of the Technical Member. The only logical manner in which it must be understood is that even if the vacancy was due to leave of absence, a Bench may be constituted consisting of the Chairman and the Vice-Chairman, there may be other reasons like recusal or resignation or long pending vacancy which justifies the formation of Bench consisting of the Chairman and the Vice-Chairman. That alone would advance the reason for making the order remove the difficulties that arise when there is a vacancy. The Act itself places no embargo on the Chairman and Vice-Chairman acting either as Judicial Member or Technical Member. Section 2(1) (k) and 2(z) (d) of the Act are very clear. So this further justifies the constitution of the Bench consisting of the Chairman and the Vice-chairman. For the above reasons, it has been decided to constitute the Bench consisting of the Chairman and the Vice-Chairman from 6.6.2011 for hearing trade mark matters, which have not been taken up for hearing since 28th December, 2010 for want of a Technical Member.
Sd/- CHAIRMAN 12.05.2011 ******************************************************************************************************* The circuit bench sittings will be held at IPO, Dwaraka, Delhi from 23.05.2011 to 25.05.2011 and at Mumbai from 01.06.2011 to 03.06.2011 for hearing Patent Cases. Hearing notices are being sent separately. Sd/- (G. VIJAYARAGHAVAN) Deputy Registrar *******************************************************************************************************
It has been observed that some of the Applications, Appeals and Miscellaneous Petitions filed before Registrar, are typed on Sd/- (G. VIJAYARAGHAVAN) Deputy Registrar ******************************************************************************************************* |
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