The International Association … vs Union Of India on 12 February, 2021


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Supreme Court of India

The International Association … vs Union Of India on 12 February, 2021

Author: L. Nageswara Rao

Bench: L. Nageswara Rao, S. Ravindra Bhat

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                                                                     REPORTABLE

                                IN THE SUPREME COURT OF INDIA
                                 CIVIL ORIGINAL JURISDICTION

                  MISCELLANEOUS APPLICATION NO.2219/2020
                                    IN
                           W.P.(C) NO.1431/2019


THE INTERNATIONAL ASSOCIATION FOR PROTECTION
OF INTELLECTUAL PROPERTY (INDIA GROUP)      …APPLICANT(S)




                                          VERSUS

UNION OF INDIA                                                   ….RESPONDENT(S)



                                          JUDGEMENT

S. RAVINDRA BHAT, J.

1. This judgement will dispose of an application by which directions are sought
that till a new chairperson of the Intellectual Property Appellate Board (hereafter
referred to as “the board” or “IPAB”), is appointed, the incumbent (whose tenure had
been extended by interim orders of this court, up to 31.12.2020) should continue to
function as Chairperson.

2. The applicant (the International Association for Protection of Intellectual
Property [India Group]) had preferred a Writ Petition (WP(C) 1431/2019), which was
disposed of by this court by a judgement along with a batch of other petitions and
applications on 27th November 2020, in the judgement reported as Madras Bar
Association v Union of India1. The applicant seeks extension of the term of the

1
(2020) SCC OnLine SC 962.

2

incumbent Chairperson of the board stating that his appointment was made under
section 89A of the Trademarks Act, 1999 (“TM Act” hereafter). The applicant urges
that Section 184 of the Finance Act, 2017, prescribes the term of office and the
conditions of service of Chairperson and members of various tribunals including that
of the Board. Section 161 of the Finance Act inserted Section 89A to the TM Act-
which stipulates that the term of office of appointments to the board after the date of
commencement of the Finance Act would be governed by the provisions of the
Section 184 of the said Finance Act. The outer limit prescribing the age limit of the
chairperson of the board is 70 years, in terms of Section 184.

3. It is contended that in the judgement in Rojer Mathew2 this court had directed
that appointments made to the board preceding the rules framed in 2020 under the
Finance Act within (hereafter the 2020 Rules) were governed by the parent
enactment. Reliance is placed on the relevant extract of the main judgement of this
court in this regard (para 53 [xv]). It is stated that the parent Act in this case is the
Trademarks Act (hereafter the ‘TM Act’). In this context, it is contended that since
the outer limit of the tenure of the chairperson is 70 years under the parent Act, i.e.
the TM Act, the age of 65 years contemplated under Section 86 of that Act no longer
applies.

4. Learned counsel contrasts Section 86 and Section 89 of the TM Act and
contends that though Section 86 on the one hand prescribes the outer age limit (for
the tenure of chairperson) as 65 years, that is over borne by the provisions of section
89A
, which states that the terms and conditions hitherto applicable would no longer
be so and that in matters of conditions of service and tenure of appointment, the
provisions of section 184 of the Finance Act would apply. It is contended by senior
counsel that the Rules were originally framed with effect from 01.06.2017, under
which the present incumbent was appointed. These rules were set aside by Rojer
Mathew, in which all sitting members and chairpersons of various tribunals were
2
Rojer Mathew v. South Indian Bank Ltd., (2020) 6 SCC 1.

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protected, till new rules were framed. The Rules framed in 2020, have now been
substantially read down or quashed. The clarification that the present incumbent, in
fact, would continue to hold office in spite of attaining the age of 65 years, logically
flows from the ruling in Madras Bar Association (supra). A clarification of this is
essential, given that in law, the outer limit has now been extended to 70 years. The
attention of this court is also drawn to para 53 (ix) of the judgement of this court
dated 27th November 2020.

5. Learned counsel relied upon the said judgement. It was argued that the orders
made by this court during the pendency of that case, till final judgment, i.e. dated
27th of November, 2020 protected the tenures of all incumbent tribunal members and
their chairpersons. Specific reliance was placed upon the order dated 16 th
September 2020, which had extended the tenure of office of all incumbent members
of all tribunals, to 31st December, 2020. The applicant also urged that it is essential
that there is continuity and that taking into consideration the workload of the board, it
is absolutely essential that it is headed by a properly qualified chairperson.

6. The learned senior counsel for applicant particularly relies on Section 84(2) of
the TM Act and urges that there can be no bench without a judicial member. It is
submitted that at the moment none of the members of the board are judicial
appointees, but rather are technical members. It is submitted that the board does not
even have a Vice-Chairman, who can in the absence of the Chairperson officiate as
the acting Chairperson. Therefore, it is imperative that the clarifications and
directions sought should be granted.

7. The application was opposed on behalf of certain third parties who urge that
this court should not grant the relief which the applicant seeks. In this regard, it is
pointed out that the tenure of office in terms of the order of appointment of the
present incumbent to the office of chairperson of the board clearly stipulated that the
tenure for which he could continue to serve on the board was till 21 stSeptember 2019.
It is contended in this context that the original appointment was made when the
incumbent chairperson of the board was holding another office as chairperson of a
4

quasi-judicial body. The order of appointment, originally made in 2017, no doubt did
not indicate a tenure; however according to applicable law (i.e. the Rules of 2017) the
maximum tenure was 3 years. However, that order was amended to specifically read
that the order that the appointment would cease upon completion of a specific date,
i.e. 21.09.2019.

8. The third-party objectors also opposed the interpretation given to Section 86
and 89A. It was contended that the change brought about by section 89A was merely
to indicate that the tenure of office of the chairperson and members would
thenceforth (i.e. after the enactment and coming into force of the Finance Act of
2017) be in accordance with Section 184 of the Finance Act. It is urged in this
context that Section 184 does not ipso facto prescribe or indicate any term of
appointment or tenure, except to enumerate outer limits of tenure terms and
maximum age for members or chairpersons of tribunals to hold office. The legislation
leaves the matter to the rules that were to be framed under the said Finance Act. It is
submitted in other words that, the Act per se does not prescribe any terms, but rather
indicates outer limits. Since the entire conditions of service, including the indicative
tenure of office was to be prescribed in respect of each tribunal by the rules, even if
for a moment, the applicant’s contentions were to be understood as meaning that the
incumbent was appointed first under the old rules of 2017, his term of office
nevertheless ended in September 2019. This was before the judgement in Rojer
Matthew was delivered. This court in Rojer Matthew specifically stated that as the
then existing rules framed in 2017 were held to be unconstitutional, a window of
continuing in office, in terms of the parent enactment, was applicable. It is submitted
that in the context of the present incumbent of the board, the tenure of office
obviously could not have been extended since the outer limit under the parent act was
65 years.

Relevant provisions

9. By virtue of the provisions of Part XIV of the Finance Act 2017, 25 (twenty-
five) central enactments were amended so that, from the appointed date, firstly,
5

provisions relating to terms and conditions of service of the members of those
tribunals were substituted with provisions allowing the Central Government to
specify the same with rules under the Finance Act. Secondly, eight existing tribunals
established under different legislations (specified in the Ninth Schedule) were
abolished and their respective jurisdictions and powers were incorporated into seven
existing tribunals, reducing the number of tribunals from 26 to19. Thirdly, under
Section 184 of the Finance Act, the Central Government was authorized to frame
delegated legislation (rules) spelling out the eligibility criteria, selection process,
removal, salaries and allowances, tenure and other terms and conditions of service
for the remaining 19 tribunals (specified in the Eighth Schedule). The
constitutional validity of Section 184 and the Tribunal, Appellate Tribunal and Other
Authorities (Qualifications, Experience & Other Conditions of Service of
Members) Rules, 2017 Rules (hereafter “the 2017 Rules”) was considered in a batch
of writ petitions and appeals, of which judgment was rendered in Rojer Mathew v
South Indian Bank Ltd. (supra).The judgment, delivered by a bench of five judges,
upheld Section 184. However, the 2017 Rules were held to be contrary to the
constitutional scheme as interpreted by several previous rulings of Constitution
Benches. As a result of that judgment, the Central Government framed fresh rules in
2020 (hereafter “2020 Rules”) which were again questioned in the Madras Bar
Association case. The Madras Bar Association case is a sequel (to Rojer Mathew), by
which this court considered and pronounced upon the validity of the 2020 Rules, and
read down several of them.

10. The relevant provisions of the Finance Act, 2017 are as follows:

“Section 161. In the Trade Marks Act, 1999—

(a) for the word “Chairman” or “Vice-Chairman”, wherever it occurs,
the word “Chairperson” or “Vice-Chairperson” shall be substituted;

(b) in section 83, after the words “under this Act”, the words and figures
“and under the Copyright Act, 1957” shall be inserted;

(c) after section 89, the following section shall be inserted, namely: —
6

“89A. Notwithstanding anything in this Act, the qualifications,
appointment, term of office, salaries and allowances, resignation,
removal and other terms and conditions of service of the Chairperson,
Vice-Chairperson and other Members of the Appellate Board appointed
after the commencement of Part XIV of Chapter VI of the Finance Act,
2017, shall be governed by the provisions of section 184 of that Act:
Provided that the Chairperson, Vice-Chairperson and other Members
appointed before the commencement of Part XIV of Chapter VI of the
Finance Act, 2017, shall continue to be governed by the provisions of
this Act, and the rules made thereunder as if the provisions of section
184
of the Finance Act, 2017, had not come into force.”.

11. Sections 183 and 184 occur in Part S of the Finance Act, 2017 and read as
follows:

“S.—CONDITIONS OF SERVICE OF CHAIRPERSON AND
MEMBERS OF TRIBUNALS, APPELLATE TRIBUNALS AND
OTHER AUTHORITIES

183. Notwithstanding anything to the contrary contained in the
provisions of the Acts specified in column (3) of the Eighth Schedule,
on and from the appointed day, provisions of section 184 shall apply
to the Chairperson, Vice-Chairperson, Chairman, Vice- Chairman,
President, Vice-President, Presiding Officer or Member of the
Tribunal, Appellate Tribunal or, as the case may be, other Authorities
as specified in column (2) of the said Schedule:
Provided that the provisions of section 184 shall not apply to the
Chairperson, Vice-Chairperson, Chairman, Vice-Chairman,
President, Vice-President, Presiding Officer or, as the case may be,
Member holding such office as such immediately before the appointed
day. Qualifications, terms and conditions of service of Chairperson
and Member.

Qualifications, terms and conditions of service of Chairperson,
Judicial Member and Expert Member.

184. (1) The Central Government may, by notification, make rules to
provide for qualifications, appointment, term of office, salaries and
allowances, resignation, removal and the other terms and conditions
of service of the Chairperson, Vice-Chairperson, Chairman, Vice-
Chairman, President, Vice-President, Presiding Officer or Member of
the Tribunal, Appellate Tribunal or, as the case may be, other
Authorities as specified in column (2) of the Eighth Schedule:

7

Provided that the Chairperson, Vice-Chairperson, Chairman, Vice-
Chairman, President, Vice-President, Presiding Officer or Member of
the Tribunal, Appellate Tribunal or other Authority shall hold office
for such term as specified in the rules made by the Central
Government but not exceeding five years from the date on which he
enters upon his office and shall be eligible for reappointment:
Provided further that no Chairperson, Vice-Chairperson, Chairman,
Vice-Chairman, President, Vice-President, Presiding Officer or
Member shall hold office as such after he has attained such age as
specified in the rules made by the Central Government which shall not
exceed—

(a) in the case of Chairperson, Chairman or President, the age of
seventy years;

(b) in the case of Vice-Chairperson, Vice-Chairman, Vice-President,
Presiding Officer or any other Member, the age of sixty-seven years:

(2) Neither the salary and allowances nor the other terms and
conditions of service of Chairperson, Vice-Chairperson, Chairman,
Vice-Chairman, President, Vice-President, Presiding Officer or
Member of the Tribunal, Appellate Tribunal or, as the case may be,
other Authority may be varied to his disadvantage after his
appointment”

12. In Rojer Mathew after pronouncing that the 2017 Rules were unsustainable,
and quashing them, with a direction to the Central Government to frame new Rules,
this court also directed as follows:

“Interim relief

224. As the Tribunal, Appellate Tribunal and Other Authorities
(Qualification, Experience and Other Conditions of Service of
Members) Rules, 2017 have been struck down and several directions
have been issued vide the majority judgment for framing of fresh set of
rules, we, as an interim order, direct that appointments to the
Tribunal/Appellate Tribunal and the terms and conditions of
appointment shall be in terms of the respective statutes before the
enactment of the Finance Bill, 2017. However, liberty is granted to the
Union of India to seek modification of this order after they have
framed fresh rules in accordance with the majority judgment.
However, in case any additional benefits concerning the salaries and
emoluments have been granted under the Finance Act, they shall not
be withdrawn and will be continued. These would equally apply to all
new Members.”
8

13. The board has been set up by Section 83 of the TM Act to exercise the
jurisdiction, powers and authority conferred on it by or under that enactment. Section
84
prescribes the composition of the board, which consists of a chairperson, a vice
chairperson “and such number of other Members, as the Central Government may
deem fit and, subject to the other provisions of this Act, the jurisdiction, powers and
authority of the Appellate Board may be exercised by Benches thereof.”

14. Sections 84 (2) and (3) are of some relevance in the present context; they read
as follows:

“(2) Subject to the other provisions of this Act, a Bench shall consist
of one Judicial Member and one Technical Member and shall sit at
such place as the Central Government may, by notification in the
Official Gazette, specify.

(3) Notwithstanding anything contained in sub-section (2), the 2
[Chairperson]—

(a) may, in addition to discharging the functions of the Judicial
Member or Technical Member of the Bench to which he is appointed,
discharge the functions of the Judicial Member or, as the case may be,
the Technical Member, of any other Bench;

(b) may transfer a Member from one Bench to another Bench;

(c) may authorise the Vice-Chairperson, the Judicial Member or the
Technical Member appointed to one Bench to discharge also the
functions of the Judicial Member or the Technical Member, as the
case may be, of another Bench.

15. Sections 86 and 87 read as follows:

“86. Term of office of Chairperson, Vice-Chairperson and other
Members.—The Chairperson, Vice-Chairperson or other Members
shall hold office as such for a term of five years from the date on
which he enters upon his office or until he attains,—

(a) in the case of Chairperson and Vice-Chairperson, the age of
sixty-five years; and
9

(b) in the case of a Member, the age of sixty-two years, whichever is
earlier.

87. Vice-Chairperson] or senior-most Member to act as 1
[Chairperson] or discharge his functions in certain circumstances—
(1) In the event of or any vacancy in the office of the Chairperson by
reasons of his death, resignation or otherwise, the Vice-Chairperson
and in his absence the senior-most Member shall act as Chairperson
until the date on which a new 1 Chairperson, appointed in accordance
with the provisions of this Act to fill such vacancy, enters upon his
office.

(2) When the Chairperson is unable to discharge his functions owing
to his absence, illness or any other cause, the Vice-Chairperson and
in his absence the senior-most Member shall discharge the functions
of the Chairperson until the date on which the Chairperson resumes
his duty.”

16. Section 89A of the TM Act reads as follows:

“89A. Qualifications, terms and conditions of service of
Chairperson, Vice-Chairperson and Member.—Notwithstanding
anything in this Act, the qualifications, appointment, term of office,
salaries and allowances, resignation, removal and other terms and
conditions of service of the Chairperson, Vice-Chairperson and other
Members of the Appellate Board appointed after the commencement
of Part XIV of Chapter VI of the Finance Act, 2017 (7 of 2017), shall
be governed by the provisions of section 184 of that Act:

Provided that the Chairperson, Vice-Chairperson and other Members
appointed before the commencement of Part XIV of Chapter VI of the
Finance Act, 2017 (7 of 2017), shall continue to be governed by the
provisions of this Act, and the rules made thereunder as if the
provisions of section 184 of the Finance Act, 2017, had not come into
force”

17. The present incumbent to the office of Chairperson of the Board was appointed
as the Chairman, Appellate Tribunal for Forfeited Property (ATFP). The terms and
conditions under which he was appointed have not been placed on record; however, it
appears that the appointment was soon after he demitted office as Judge of the Delhi
High Court, sometime after September 2016. On 26.07.2017, he was also given the
additional charge of the Chairman in the IPAB, i.e. the Board, in terms of the then
10

extant 2017 Rules, for a period of three years – or until further orders, whichever was
earlier. The said order of 20.07.2017 is extracted below:

F. No.P-24017/44/2017-IPR-I
Government of India
Ministry of Commerce & Industry
Department of Industrial Policy & Promotion
IPR – I section
Udyog Bhawan, New Delhi – 110 011
ORDER
The President of India is pleased to appoint Justice (Retd.)
Manmohan Singh, Chairman, Appellate Tribunal for Forfeited
Property to the post of Chairman, in the Intellectual Property
Appellate Board (IPAB), Chennai, in the scale of pay as prescribed in
the Tribunal, Appellate Tribunals and other Authorities
(Qualifications, Experience and other Conditions of Service of
Members) Rules, 2017, for a period of three years with effect from the
date of assumption of charge to the post, or until further orders,
whichever is the earlier.

(B.S. Nayak)
Under Secretary to the Govt. of India
Tel: 23061257”

18. The order of appointment – as Chairperson of the Board – was amended on
29.12.2017 by the Central Government. This later order stated that the tenure of his
appointment as Chairman of the Board was upto 21.09.2019 or till further orders,
whichever was earlier. The later order of 29.12.2017 reads as follows:

“No. P-24017/44/2017-IPR-I
Government of India
Ministry of Commerce & Industry
Department of Industrial Policy & Promotion
11

(IPR – Establishment Section)
***
Udyog Bhavan, New Delhi-110 011,
Dated 29th December, 2017

ORDER
In supersession of this Department’s earlier order dated 20th July,
2017, the President of India is pleased to entrust the additional
charge of the post of Chairman, Intellectual Property Appellate Board
(IPAB) to Justice (Retd.) Manmohan Singh, Chairman, Appellate
Tribunal for Forfeited Property (ATFP) in addition to his current
duties from the date of assumption of charge of the post up to
21.09.2019 i.e. till his tenure on the post of chairmen, ATFP or until
further orders, whichever is earlier.”
(B.S. Nayak)
Under Secretary to the Govt. of India
Tel: 23061257”

19. The judgment in Rojer Mathew by the five judge Constitution Bench was
delivered on 13.11.2019. That judgment pronounced upon the validity of the 2017
Rules and quashed them. However, before the 2017 Rules were declared
unconstitutional, the tenure of the incumbent to the office of the Chairperson of the
Board ended on 21.09.2019. This Court recollects that the operation of the 2017
Rules had not been suspended during the pendency of the petitions challenging them
(i.e. Rojer Mathew batch of cases). During the pendency of the said batch of
petitions, this court had occasion to issue a series of interim orders. The order dated
20.03.2018 clarified a previous order (dated 09.02.2018 (in Kudrat Sandhu v. Union
of India WP
279/2017) as follows:

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         “(iii)    The     tenure     of    the     Chairperson     and   the
         Judicial/Administrative/Expert/Technical       Members      of    all

the Tribunals shall be for a period of five years or the maximum age
that was fixed/determined under the old Acts and Rules;”

20. On 16.07.20183, the following directions in regard to the age of the
superannuation of Member of the Income Tax Appellate Tribunal (ITAT)were
made:

“At this juncture, we may note that there is some confusion with
regard to the Income Tax Appellate Tribunal (ITAT) as regards the age
of superannuation. We make it clear that the person selected as
Member of the ITAT will continue till the age of 62 years and the
person holding the post of President, shall continue till the age of 65
years.”

21. In the same petition, the court had occasion to again clarify the previous
orders, in the context of the President and Members of the Customs Excise and
Service Tax Appellate Tribunal (CESTAT). It was expressly stated that the tenure of
members would be upto their attaining the age of 62 and, in the case of the President
(of CESTAT) the tenure age limit would be 65 years.4

22. Given these circumstances, the arguments advanced on behalf of the applicant
that the incumbent chairperson continued to remain in office in view of the
declaration of law by Rojer Mathew, is insubstantial and cannot be countenanced. The
other reason for not accepting this contention is that if, for a moment it were to be
assumed that in terms of the interim arrangement directed by the majority
judgment in Rojer Mathew (in para 224 extracted above), the appointments to
Tribunals/Appellate Tribunals were to be “in terms of the respective statutes before
the enactment of the Finance Bill, 2017..”, the amendments brought about through
Sections 184, in terms of the maximum age up to which any Member or Chairperson
can hold office in a Tribunal could not apply in the case of the Board. This is because
3
Reported as Kudrat Sandhu v Union of India 2018 SCC Online 1335 (SC)
4
This order is reported as Kudrat Sandhu v Union of India 2018 (18) SCC 796
13

the Rules of 2017 had fixed the tenure limits of chairpersons and members of
tribunals, including that of the chairperson of the board. 5 In terms of those Rules,
(i.e., the rules of 2017) the tenure of the present incumbent ended on 21.09.2019. As
noticed earlier, the rules were ultimately struck down only on 13.11.2019. At that
time, the only order prevailing, which had directed status quo with respect to tenure
and age limits for members and chairpersons of various tribunals, were the interim
orders and clarifications in Kudrat Sandhu, dated 09.02.2018; 20.03.2018;
16.07.2018 and 21.08.2018. These had stated that the maximum tenure of such
members or chairpersons would be as stipulated in the parent enactments, before the
coming into force of the Finance Act, 2017, or were expressed to be for a maximum
of 3 years, in the case of chairpersons. The period had ended, so far as the applicant is
concerned, on 21.09.2019.

23. Another argument urged by the applicant was that the Finance Act, 2017 had
inserted Section 89A of the TM Act, (introduced by Section 161 of the former Act)
which states that the tenure of office and maximum age of retirement would be
governed by the terms of the said Finance Act and, consequently, the pre-existing
tenure and age limits did not apply. Undoubtedly, the purport of Section 89A was to
overbear or supersede the pre-existing age and tenure limits (the existing tenure and
age limits have been indicated in Section 86 of the TM Act). However, the Finance
Act
merely stipulates the potential maximum age limits and tenure limits. In the case
of Chairpersons, the maximum age limit prescribed was seventy years (by virtue of
second proviso to Section 184 [1]). However, by virtue of the first proviso to Section
184
(1), members or chairpersons could be appointed “for such term as specified in
the rules made by the Central Government but not exceeding five years from the date
on which he enters upon his office”. Thus, the outer limit of the tenure was five years.
As noticed earlier, the Central Government had fixed the tenure of chairperson of the
board to be three years. By the time this rule was held unconstitutional, the tenure of
5
By S. No.12, Column 5 had fixed the tenure of Chairperson, Vice Chairman/Judicial Members of the Board at 3 years
and indicated that the outer limit for the tenure of Chairperson would be 67 years whereas that of the Vice Chairman
and Members would be 65 years.

14

the incumbent holding office of chairperson, of the board ended, on 21.09.2019. The
final judgment in Rojer Mathew, could not have per se been applied to the facts of
this case. The applicant’s contentions in this regard are of no avail; it is after the
judgment in Madras Bar Association (supra) that the tenure has been mandated to be
five years. It is to be noticed that even the 2020 Rules did not prescribe the maximum
tenure; it rather confined the tenure to four years. In the facts of this case, even if that
were to be applied – assuming such a course to be available, the four-year period too
ended on 21.09.2020. It is important to notice that the changes brought about in the
tenure and age limits were not only through the Schedule to the Finance Act, 2017,
but also through its substantive provisions – Sections 156 to 182. 6 These provisions
introduced changes relating to tenure and age limits for members and chairpersons of
19 tribunals (including the Income Tax Appellate Tribunal; Securities Appellate
Tribunal, Competition Commission of India, CESTAT, Railway Claims Tribunal,
Central Administrative Tribunal, Debt Recovery Tribunal, Debt Recoveries Appellate
Tribunals, the IPAB -i.e. the Board, in this case, etc.). All these provisions, much like
Section 89A of the TM Act, aligned Parliamentary intention to legislate uniform
tenure limits and maximum age for members and chairpersons. Therefore, Section
89A
is only part of the entire legislative design. However, that has no bearing on the
circumstances of the present case.

24. The last contention which this court has to deal with is the applicant’s position
that the Board cannot function without a judicial member, and that at present, only
the incumbent Chairperson is a judicial member, and that if his tenure is not extended
by a judicial order, the Board would be unable to function. Subsidiary to this
argument is that no member can function as a Chairperson, as none of the existing
members are judicial members, but are technical members.

6

In a part entitled PART XIV AMENDMENTS TO CERTAIN ACTS TO PROVIDE FOR MERGER OF TRIBUNALS AND
OTHER AUTHORITIES AND CONDITIONS OF SERVICE OF CHAIRPERSONS, MEMBERS, ETC.

15

25. The submissions of the applicant, in the opinion of this court, are meritless.
Section 84 (2) of the TM Act no doubt states that a bench of the board shall consist of
a judicial and a technical member. However, it is “subject to other provisions” of the
TM Act. Section 84(3) commences with a non obstante clause and stipulates, by
Section 84(3)(a) that a chairperson may, “in addition to discharging the functions of
the Judicial Member or Technical Member of the Bench to which he is appointed,
discharge the functions of the Judicial Member or, as the case may be, the Technical
Member, of any other Bench.” Thus, in the absence of any member, the chairperson
may, if the occasion so arises, act as technical or judicial member. Section 87 enables
a vice-chairperson, or as the case may be the senior-most member of the board to act
as chairperson in the event of a vacancy to that position, or in the event of the
incumbent’s inability to function in the post. Furthermore, significantly, Section 85
inter alia stipulates the qualifications for the post of chairperson or vice-chairperson.
The relevant provisions of this section (extracted below)7reveal that there is no bar for
a technical member to be appointed as a regular chairperson, provided she or he has
for “at least two years, held the office of a Vice-Chairperson”. In fact, the
incumbent five technical members all hold legal qualifications 8 (three of them
holding masters in law, including one who holds a post-doctoral qualification). Four
of these incumbent members were practising advocates in specialized fields of

7

85. Qualifications for appointment as Chairperson, Vice-Chairperson, or other Members.—
(1) A person shall not be qualified for appointment as the Chairperson unless he—

(a) is, or has been, a Judge of a High Court; or

(b) has, for at least two years, held the office of a 3 [Vice-Chairperson.
(2) A person shall not be qualified for appointment as the Vice-Chairperson, unless he—

(a) has, for at least two years, held the office of a Judicial Member or a Technical Member; or

(b) has been a Member of the Indian Legal Service and has held a post in Grade I of that Service or any
higher post for at least five years.

(3) A person shall not be qualified for appointment as a Judicial Member, unless he—

(a) has been a member of the Indian Legal Service and has held the post in Grade I of that Service for at least
three years; or

(b) has, for at least ten years, held a civil judicial office.
(4) A person shall not be qualified for appointment as a Technical Member, unless he—

(a) has, for at least ten years, exercised functions of a tribunal under this Act or under the Trade and
Merchandise Marks Act, 1958 (43 of 1958), or both, and has held a post not lower than the post of a Joint Registrar for
at least five years; or

(b) has, for at least ten years, been an advocate of a proven specialised experience in trade mark law.

8

These particulars are available at the website of the Intellectual Property Appellate Board website
https://www.ipab.gov.in/technical_members_page.php?id=2 (accessed at 23:35 hours on 04.02.2021)
16

intellectual property (trademarks, and copyright) and one technical member (patents)
had experience in the Patent Office. These members had practical legal experience of
ten to fifteen years. The fact that they were appointed as technical members cannot
obfuscate the fact that they are legally trained and qualified. Therefore, the argument
that the technical members, in their position at the board as of now, cannot function
without a chairperson, is unsustainable.

26. In view of the above conclusions, this court holds that the applicant cannot be
granted any relief. The application is accordingly dismissed; there shall, however, be
no order on costs.

……………………………………………..J
[L. NAGESWARA RAO]

……………………………………………..J
[HEMANT GUPTA]

……………………………………………..J
[S. RAVINDRA BHAT]

New Delhi,
February 12, 2021.



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