IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) W.P. No of Versus

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1 IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) W.P. No of 2017 In the matter of: Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan, No. 315, Mowbrays Road, Royapettah, Chennai Versus : Petitioner 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, Ministry of Industry & Commerce, Government of India, Udyog Bhavan, New Delhi Intellectual Property Appellate Board, represented by its Registrar, Annex-I, Guna Complex, II Floor, 443, Anna Salai, Teynampet, Chennai :Respondents AFFIDAVIT FILED ON BEHALF OF THE PETITIONER I, Perumbulavil Radhakrishnan, aged about 52 years, Hindu, residing at 150, (Old No.315) T.T.K.Road, Royapettah, Chennai , do hereby solemnly affirm and sincerely states as follows: 1. I am a practicing Advocate and I am the President of the petitioner Association viz. Intellectual Property Association of South India, hereinafter referred to as IPASI. I am well

2 2 acquainted with the facts and circumstances of the case and I am competent to swear this affidavit. Neither me nor the Association have any personal interest in filing of this Writ Petition; the Petition is being filed out of funds of the Association. The petitioner association is assessed to income tax, the PAN number being AAAAI6088B. No writ or other legal proceeding has been instituted till date with regard to the subject matter of this Writ Petition. The petitioner association will bear the costs if it is found that the writ petition is intended for personal gain or oblique motive. No PIL has also been filed anywhere else on this subject matter as on date. 2. I submit that the 1 st respondent is the union of India represented by its Secretary, Department of Industrial Policy & Promotion, Ministry of Industry & Commerce, Government of India, Udyog Bhavan, New Delhi I submit that the 2 nd respondent is Intellectual Property Appellate Board represented by its Registrar. 4. I submit that the present writ petition is being filed as public interest litigation seeking for appointment of Chairman to the 2 nd respondent viz. Intellectual Property Appellate Board by the 1 st respondent, whose office has been vacant since May 2016, after the retirement of the then Chairman Mr. Justice Basha on , for the appointment of Vice Chairman, whose office has been vacant for more than 2 years and for appointment of Technical Member (Patent) whose office has been vacant since May 2016 and for appointment of Judicial member who has not been appointed till date since the institution of 2 nd Respondent way back in the year I submit that the petitioner is an association registered under the society s registration Act, 1975, formed by Advocates, Patent and Trademark Attorneys, practicing in the field of

3 3 Intellectual Property Rights. The objective of the Society is to facilitate dialogue among professionals in the field and strive towards promoting intellectual property rights protection in India. IPASI regularly organises discussion among members on changes and new trends in the law relating to intellectual property rights and also conducts seminars and workshops with industry and in educational institutions. The Petitioner is committed to the growth and development of law and practice on Intellectual property rights and administration of justice relating to Intellectual property rights in India. The petitioner has no personal interest or motive in filing the present petition. The petitioner is filing the present petition only with a view to make the 2 nd respondent functional whose office has been vacant and non-functional since and for appointment of other members of the Board. After the retirement of its then Chairman, only the Technical member (Trade Mark) has been acting as Chairman and the 2 nd respondent has become non-functional one due to want of quorum. 6. I state that the 2 nd respondent is a statutory body, created by the Trade Marks Act, 1999 and is a specialized body constituted to hear original revocation/rectification petitions and appeals against the orders passed by the Learned Registrar, Trade Marks and Controller of Patents and Designs. The present petition is filed seeking to appoint a Chairman, Vice Chairman, Judicial Member, Technical Member (Patents) to the 2 nd respondent in order to minimize the enormous backlogs of trademark and patent cases pending before the 2 nd respondent due to unprecedented delay in appointing the chairman, Vice Chairman and other members of the 2 nd respondent Board by the 1 st respondent herein. The petitioner is filing the present writ petition on its own accord and is not funded by any external sources. 7. I submit that the 2 nd respondent Board was established by the 1 st respondent under section 83 of the trademarks act, 1999 vide S.O.1049(E), dated 15 th September, 2003, published in the

4 4 Gazette of India, extra., Pt.II, sec.3(ii), dated 15 th September, The 2 nd respondent under section 83 of the trademarks act, 1999 is the Appellate Board for the purpose of exercising jurisdiction, powers and authority conferred under the said act. Further, section 116 of the Patents act, 1970 also envisages that the 2 nd respondent Board shall be the Appellate Board to exercise the jurisdiction and powers granted under the patents act, I submit that the 2 nd respondent was established in order to hear and decide all appeals from the decision and orders of the registrar of trademarks and Patents, which was earlier heard and decide by the High Courts. Further, in addition to exercising appellate jurisdiction, the 2 nd respondent exercise original jurisdiction over case for rectification of the register under section 57 of the Trademarks Act, 1999, as well as section 71 of the Patents Act, 1970 and under the Geographical Indications of Goods (Registration and Protection) Act, 1999 as the case may be. I submit that the decisions of the 2 nd respondent are widely recognised not only within India but even in International arena. It would be worthwhile to note that the orders of the 2 nd respondent are reported in all leading international publications. It would also without exaggeration to state that the decisions of the 2 nd respondent is viewed internationally as the nation s stance on intellectual property policy, and has been debated in various international forums. 9. I submit that the legislative intent behind establishing the 2 nd respondent Board is evident from the statement of objects and reason of the Trademarks act is that to provide for an Appellate Board for speedy disposal of appeals and rectification applications which then lay before the High Courts, whereby virtually the jurisdiction of the High Court has been taken away and vested with the 2 nd Respondent Board. I submit that the 2 nd respondent Board was established to create a specialized appellate mechanism

5 5 capable of providing speedy disposal of appeals and rectification applications and simultaneously lessen the burden of high courts caused due to enormous backlog of cases. Even after the constitution of the 2 nd respondent Board, the 1 st respondent did not evince any interest in filling up the vacancies and to make the 2 nd respondent Board as an effective functional one. 10. I submit that the 2 nd respondent was intended to serve as an alternate forum to high courts in matters involving trademark and Patent rights. It is submitted that the decision of the 2 nd respondent Board in matters of trademarks and patents is deemed to be final and binding as there exists a specific bar of jurisdiction of any other courts as provided under section 93 of the trademarks act, However, it is pertinent to note that the decisions of the 2 nd respondent Board are subject to writ jurisdiction of the High courts, even though there is no specific provision. 11. I submit that though the 2 nd respondent Board was established for speedy disposal of matters pertaining to trademarks and patents the number of cases pending before the 2 nd respondent has gradually increased day by day to an extent wherein several matters relating to trademarks and patents are pending before the High Courts including this Hon ble Madras High Court in order to decide upon the validity of such trademark and patents as the case may be. The litigants are forced to approach the High Courts for immediate reliefs as the 2 nd respondent has become non-functional and the litigants are unable get any orders. In case of parallel proceedings before the 2 nd respondent board and the High Courts involving matters related to registration of trademark and its validity, section 124(1)(i) of the trademarks act, 1999 provides for stay of proceeding wherein the court trying the suit shall stay the suit pending the final disposal of such proceedings pending before the 2 nd respondent board. It is submitted that as a result of such stay

6 6 of proceedings there are numerous cases pending before the High Courts including this Hon ble Court awaiting the decision of the 2 nd respondent board. The 2 nd respondent Board has its Circuit sitting at Bombay, Delhi, Ahmedabad and Kolkata with Chennai being the headquarters. Given the awareness of intellectual property rights, the numbers of trademark and patent suits filed across the country has increased manifold. 12. I submit that as per section 84 of the trademarks act, the 2 nd respondent board shall constitute a bench consisting of one judicial member and one technical member to hear appeals. It is submitted that recently the then chairman cum judicial member of the 2 nd respondent board namely retd. Justice. K.N.Basha retired from the post of chairman after attainting the age of superannuation on 13 th May It is submitted that pursuant to the retirement of the then chairman, the 1 st respondent till date has not appointed not only the Chairman but also the Vice Chairman and other members of the Board. It is relevant to state that subsequent to the retirement of the then chairman in May 2016, the 2 nd respondent board did not constitute the bench as there was no quorum to hear the pending proceedings. I submit that as a result of the 2 nd respondent board not constituting the bench to hear matters there are several matters pending before the 2 nd respondent as well the High courts. It is submitted that the pendency of matters before the 2 nd respondent as well as before the High Courts is causing great hardships to the litigants who approach the 2 nd respondent board with a view to dispose of the matters in a speedy manner. 13. I submit that in cases where the registration of a trademark is pending before the 2 nd respondent board the litigants have to invariably wait for an unwarranted period to resolve the issue of registration of the trademark and it in turn causes further delay in obtaining the registration of the trademark.

7 7 14. I submit that in case of Patent matters involving appeals from pre-grant oppositions and as well as appeals from the Controller, the delay caused due to the 2 nd respondent board s inability to hear matters has caused grave injustice to the litigants. Further, the judicial delay caused due to the pendency of appeal proceedings before the 2 nd respondent Board is hampering and causing grave prejudice to the rights of patentees and that too when the patent term itself is 20 years, which starts from the date of filing. Further, in view of such pendency, the valuable rights of inventors are at stake all over India. 15. It is further submitted that the absence of Chairman of the 2 nd respondent board has caused several appeals lying before various high courts to be shelved. It is submitted that several litigants as well advocates have made representations to the 1 st respondent to expedite the process of appointing the chairman for the 2 nd respondent, however till date the 1 st respondent has not appointed any such competent person as the Chairman, Vice Chairman and other Members of the 2 nd respondent Board. The 1 st respondent is duty bound to fill up the vacancies well in advance as far as possible so that the 2 nd respondent functions always. It is further submitted that the 1 st respondent is duty bound to ensure that the Statutory Institutions like the 2 nd respondent are functional rather than to make it defunct. It is submitted that the 2 nd respondent board is presently presided over by the Technical Member (Trademarks) as acting Chairman. It is submitted that vide notification no /3/2016 dated constituted the Deputy Registrar Court has been constituted for taking up cases for hearing with reference to administrative process of maintainability of abandonment of applications/appeals on account of defects pending under SR stage including receipt of filing counter statements, replies, issuance of notices and extending extension up to 30 days to the parties in miscellaneous proceedings related appeals/applications

8 8 filed before the IPAB Registry. Further, the notification also states that it has been decided that henceforth onwards, the Deputy Registrar will hold Court regularly in Chennai Registry and shall take up all matters under Trademarks Act, Patents Act and Geographical Indication Act to complete the administrative process of maintainability of abandonment of applications/appeals on account of defects pending under SR stage including receipt of filing counter statements, replies, issuance of notices and extending extension up to 30 days to the parties in miscellaneous proceedings related appeals/applications filed before the IPAB Registry, and that henceforth the IPAB Registry shall list and place all pending matters before the Deputy Registrar for completion of miscellaneous proceedings in Chennai as well as and when the court constituted for other places such as Ahmedabad, Delhi, Kolkata and Mumbai. The said notification is in contravention to the order passed by IPAB being Order in ORA/267/2008/TM/CH dated , wherein it was specifically decided by an order of court by the then Chairman Mrs. Justice Prabha Sridevan that condonation of delay would be decided by the duly constituted bench and the same shall be as an order of the Board. The notification has also empowered the Deputy Registrar to have Circuit sittings at Delhi. It is noteworthy to mention that under the statute and Rules, the Deputy Registrar is not competent to have any sitting in any other place except the Headquarters. The Deputy Registrar is not competent to have any sitting at any of the Circuit Benches except at the headquarters which is clear from the statute and Rules. 16. Aggrieved by the unwarranted, unlawful and callous delay on the part of the respondents in appointing a chairman for the 2 nd respondent board, the petitioner has filed the present petition in public interest, on the following, among other

9 9 GROUNDS A. Because of the prolonged vacancy of the post of Chairman, Vice Chairman and other Members of the second respondent defeats the objective of the establishment of the second respondent. B. Because of the office of Chairman, Vice Chairman and other Members remaining vacant, several revocation petitions, rectification petitions and appeals have been pending for a long time without the same being adjudicated. C. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent there is an unprecedented delay and backlog of matters pending adjudication. D. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, several suits pending before various High Courts have been stayed and are awaiting an order to be passed by the second respondent in rectification/revocation proceedings. E. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, several appeals against Controller of Patents are pending. Given the fact that the term of a patent is 20 years, that too, it starts from the date of application, when appeals against the orders passed by the Controller of Patents are kept pending, the same would extinguish the term of patents and would jeopardize the valuable rights of patent applicants and would result in poor commercialization of the inventions. F. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, several appeals against orders passed by the Registrar of Trademarks is kept pending and the valuable rights of trademark applicants

10 10 are at stake as proprietors of a trademarks are prevented from initiating infringement proceedings against infringers in view of pendency of the appeals. G. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, trial in several suits pending before various High Courts and District Courts are stayed sine die, thereby affecting the rights of litigants and is causing judicial delay. H. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, the very purpose of constitution of the 2 nd respondent Board, which is constituted for speedy disposal of original and appellate proceedings relating to patents, trademarks and geographical indications, has been frustrated as the 2 nd respondent Board has been non-functional since May 2016, for the past 8 months. I. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, there is no quorum for functioning of the Board and the 2 nd respondent Board has been non-functional atleast since May J. The 1 st respondent has not bothered to take any action for appointing Chairman, Vice Chairman and other Members of the 2 nd respondent Board inspite of the same being criticised in both virtual and print media. K. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, the Acting Vice Chairman has issued notifications which run contrary to the speaking orders passed by the 2 nd respondent Board, thereby setting at naught an order passed by the 2 nd respondent Board by way of notification.

11 11 L. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, there is a notification constituting the Deputy Registrar Court for dealing with administrative purposes and for deciding extension of time upto 30 days for completion of pleadings when Rule 14 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 specifically provides that only the Appellate Board, if satisfied on an application, can extend time for doing any act prescribed under the Act provided sufficient cause is shown. M. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, the Acting Chairman has empowered the Deputy Registrar to hold hearings even before Circuit Bench at Delhi against the very statutory provision as the Deputy Registrar is not competent to have any sitting except at the Head Quarters. 17. The above stated grounds are without prejudice to each other and independent to each other. 18. The petitioner craves leave to amend, alter the grounds at a later stage as and when required. 19. The petitioner is not possessed of any alternative, equally efficacious remedy, and has therefore approached this Hon ble Court through the present writ petition. 20. The petitioner has not filed any similar petition before this or any other Court. The petitioner humbly submits that the present petition is filed based on the information and knowledge available to them and through the sources as mentioned herein above.

12 12 PRAYER It is, therefore, most respectfully prayed that this Hon ble Court may be pleased to issue an appropriate writ, order or direction in the form of Writ of Mandamus directing the 1st respondent to appoint Chairman, Vice Chairman, Judicial Member, Technical Member (Patents) and other members for the 2nd respondent Board and pass such further or other orders as this Hon ble Court may deem fit and proper in the circumstances of the case and thus render justice. Solemnly affirmed at Chennai, this the day of February 2017 and the deponent signed his name in my presence Before me, Counsel for Petitioner Advocate, Chennai.

13 IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) WP No of 2017 Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan, Petitioner.vs. 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, 2. Intellectual Property Appellate Board Respondents AFFIDAVIT FILED ON BEHALF OF THE PETITIONER M/s. MADHAN BABU ARUN C. MOHAN Counsel for Petitioner

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15 MEMORANDUM OF WRIT PETITION (Under Art. 226 of the Constitution of India) IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) W.P. No of 2017 In the matter of: Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan, No. 315, Mowbrays Road, Royapettah, Chennai Versus : Petitioner 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, Ministry of Industry & Commerce, Government of India, Udyog Bhavan, New Delhi Intellectual Property Appellate Board, represented by its Registrar, Annex-I, Guna Complex, II Floor, 443, Anna Salai, Teynampet, Chennai :Respondents WRIT PETITION The Petitioner humbly submits as follows: The address for service on the petitioner is that of his counsel M/s. Madhan Babu, Arun.C. Mohan at D-4, III floor, Ceebros Building, No. 32, Cenotaph Road, Teynampet, Chennai The address for service of all notices and summons on the Respondents is as stated above.

16 2 For the reasons stated in the accompanying affidavit, it is therefore humbly prayed that this Hon ble Court may be pleased to issue an appropriate writ, order or direction in the form of Writ of Mandamus directing the 1st respondent to appoint Chairman, Vice Chairman, Judicial Member, Technical Member (Patents) and other members for the 2nd respondent Board and pass such further or other orders as this Hon ble Court may deem fit and proper in the circumstances of the case and thus render justice. Dated at Chennai, this the day of February, 2017 COUNSEL FOR PETITIONER

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18 IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) W.P.No of 2017 Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan, Petitioner.vs. 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, 2. Intellectual Property Appellate Board Respondents WRIT PETITION M/s. MADHAN BABU ARUN C. MOHAN Counsel for Petitioner

19 IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) W.P. No of 2017 In the matter of: Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan, No. 315, Mowbrays Road, Royapettah, Chennai Versus 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, Ministry of Industry & Commerce, Government of India, Udyog Bhavan, New Delhi : Petitioner 2. Intellectual Property Appellate Board, represented by its Registrar, Annex-I, Guna Complex, II Floor, 443, Anna Salai, Teynampet, Chennai :Respondents SYNOPSIS 1. The present writ petition is being filed as public interest litigation seeking for appointment of Chairman to the 2 nd respondent viz. Intellectual Property Appellate Board by the 1 st respondent, whose office has been vacant since May 2016, after the retirement of the then Chairman Mr. Justice Basha on , for the appointment of Vice Chairman, whose office has been vacant for more than 2 years and for appointment of Technical Member (Patent) whose office has been vacant since May

20 and for appointment of Judicial member who has not been appointed till date since the institution of 2 nd Respondent way back in the year I submit that the petitioner is an association registered under the society s registration Act, 1975, formed by Advocates, Patent and Trademark Attorneys, practicing in the field of Intellectual Property Rights. 3. I state that the 2 nd respondent is a statutory body, created by the Trade Marks Act, 1999 and is a specialized body constituted to hear original revocation/rectification petitions and appeals against the orders passed by the Learned Registrar, Trade Marks and Controller of Patents and Designs. 4. I submit that the 2 nd respondent Board was established to create a specialized appellate mechanism capable of providing speedy disposal of appeals and rectification applications and simultaneously lessen the burden of high courts caused due to enormous backlog of cases. 5. It is submitted that recently the then chairman cum judicial member of the 2 nd respondent board namely retd. Justice. K.N.Basha retired from the post of chairman after attainting the age of superannuation on 13 th May It is submitted that pursuant to the retirement of the then chairman, the 1 st respondent till date has not appointed not only the Chairman but also the Vice Chairman and other members of the Board. It is relevant to state that subsequent to the retirement of the then chairman in May 2016, the 2 nd respondent board did not constitute the bench as there was no quorum to hear the pending proceedings. 6. I submit that as a result of the 2 nd respondent board not constituting the bench to hear matters there are several matters pending before the 2 nd respondent as well the High courts. It is

21 3 submitted that the pendency of matters before the 2 nd respondent as well as before the High Courts is causing great hardships to the litigants. 7. It is further submitted that the 1 st respondent is duty bound to ensure that the Statutory Institutions like the 2 nd respondent are functional rather than to make it defunct. It is submitted that the 2 nd respondent board is presently presided over by the Technical Member (Trademarks) as acting Chairman. 8. It is submitted that vide notification no /3/2016 dated constituted the Deputy Registrar Court has been constituted for taking up cases for hearing with reference to administrative process of maintainability of abandonment of applications/appeals on account of defects pending under SR stage and that henceforth the IPAB Registry shall list and place all pending matters before the Deputy Registrar for completion of miscellaneous proceedings in Chennai as well as and when the court constituted for other places such as Ahmedabad, Delhi, Kolkata and Mumbai. The said notification is in contravention to the order passed by IPAB being Order in ORA/267/2008/TM/CH dated , wherein it was specifically decided by an order of court by the then Chairman Mrs. Justice Prabha Sridevan that condonation of delay would be decided by the duly constituted bench and the same shall be as an order of the Board. 9. The prolonged vacancy of the post of Chairman, Vice Chairman and other Members of the second respondent defeats the objective of the establishment of the second respondent. Because of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, several suits pending before various High Courts have been stayed and are awaiting an order to be passed by the second respondent in rectification/revocation proceedings.

22 4 10. As a result of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, several appeals against orders passed by the Registrar of Trademarks is kept pending and the valuable rights of trademark applicants are at stake as proprietors of a trademarks are prevented from initiating infringement proceedings against infringers in view of pendency of the appeals. 11. As a result of the vacancy in the office of the Chairman, Vice Chairman and other Members of the 2 nd respondent, the Acting Vice Chairman has issued notifications which run contrary to the speaking orders passed by the 2 nd respondent Board, thereby setting at naught an order passed by the 2 nd respondent Board by way of notification. Hence this Public Interest Litigation. Dated at Chennai on this the day of February 2017 Counsel for Petitioner

23 1 IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) In the matter of: W.P. No of 2017 Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan, No. 315, Mowbrays Road, Royapettah, Chennai : Petitioner Versus 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, Ministry of Industry & Commerce, Government of India, Udyog Bhavan, New Delhi Intellectual Property Appellate Board, represented by its Registrar, Annex-I, Guna Complex, II Floor, 443, Anna Salai, Teynampet, Chennai :Respondents LIST OF DATES AND EVENTS S.No. DATE EVENT The 2 nd Respondent board (IPAB) was established vide S.O.1049(E), dated 15 th September, 2003, published in the Gazette of India, extra., Pt.II, sec.3(ii), The then chairman Hon ble Mr. Justice K.N. Basha retired from the post of chairman of the 2 nd respondent Board Notification no /3/2016 dated issued by the 2 nd Respondent board constituting the Deputy Registrar Court Dated at Chennai on this the day of February 2017 Counsel for Petitioner

24 IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) W.P.No of 2017 Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan, Petitioner.vs. 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, 2. Intellectual Property Appellate Board Respondents SYNOPSIS & LIST OF DATES AND EVENTS M/s. MADHAN BABU ARUN C. MOHAN Counsel for Petitioner

25 IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) W.P. No. of 2017 Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan.vs. Petitioner 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, 2. Intellectual Property Appellate Board, Respondents INDEX TO TYPED SET OF PAPERS FILED BY THE PETITIONER S.no. Date Description Certificate of registration of the Petitioner association 2 - List of members of the Petitioner association Page nos Notification no /3/ Order in ORA/267/2008/TM/CH 7 11 Certified that the above are true copies of their originals Dated at Chennai on this the day of February 2017 Counsel for Petitioner

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27 1 INCORPORATION Form. No. II (See Rule 8 Of tb.e TamiiNadu Societie Regi tration Rule, 1978) CERTIFICAT E OF REGI TRATION UN DER SECTION 10 OF THE TAMIL NADU ACT, I 975 (TAM IL NADU ACT 27 OF 1975) CERTIFICATE OF REGISTRATION OF SOCIETIES Sl. No. : 87 I 2011 I hereby erti fy that INTELLECTUAL PROPERTY ASSOCIATION OF SOUTH INDIA ha thi day been Regi tered Under The Tamil Nadu ocietie Regi tration Act, 1975 (Tamil Nadu Act 27 of 1975). Given under my hand at CHENNAI CENTRAL this 20 th day of Apri l eal : Station : ~ 0- ::;::> ~ I ) Signature of the Registrar

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29 2 MEMBERS LIST FOR IPASI S.NO NAME OCCUPATION DATE OF JOINING 1 PERUMBULLAVIL RADHAKRISHNAN ADDRESS ADVOCATE 20/04/2011 No.315, New No.150, Mowbrays Road, Royapettah, Ch-14 2 M S BHARATH ADVOCATE 20/04/2011 Anand & Anand, Flat Ga, Ar Villa, New No.31 Old No.13 3rd Main Road, Gandhi Nagar, Adyar, Ch-20 3 SWAPNA SUNDAR CEO IP STRATEGY 20/04/2011 Ega Trade Centre, No. 8, 809, Poonamallee High Rd, Kilpauk, Chennai, Tamil Nadu SUDHIR RAVINDRAN ADVOCATE 20/04/2011 High Court 5 PRABHAKARAR REDDY ADVOCATE 20/04/2011 High Court 6 JACOB KURIAN ADVOCATE 20/04/2011 New No.21(Old No.11), 2nd Avenue, Harrington Road, Chetpet, Ch-31 7 T. SRINIVASAN ADVOCATE 20/04/2011 High Court 8 MANOJ PILLAI ADVOCATE 20/04/2011 High Court 9 ROHAN GEORGE ADVOCATE 20/04/2011 High Court 1O LAXMI NARAYANAN ADVOCATE 20/04/2011 High Court 11 T K RAM KUMAR ADVOCATE 20/04/2011 Ram & Rajan & Associates, Advocates, Patents, Trademarks & Ipr Attorneys, 2, Vedanta Desigar Swami St, (Pelathope), Mylapore, Chennai , 12 SUMITHA VIBHU ADVOCATE 20/04/2011 B1, Desika Flats, No.5, Luz Avenue 1st Street, Mylapore, Ch NARAYANA PRASAD ADVOCATE 20/04/2011 High Court

30 CHANDRASEKAR ADVOCATE 20/04/2011 No.45, Vivekanandar Street, Mgr Nagar, Ch RAMESH KANNA ADVOCATE 20/04/2011 High Court 16 ANAVARTHAN ADVOCATE 20/04/2011 High Court 17 DEVI N. ADVOCATE 20/04/2011 Devi. N Advocate, "Akash Ganga", e - 3, Iii Floor, Ganga Nagar, First Main Road, Kodambakkam, Chennai RAJESH RAMANATHAN ADVOCATE 20/04/2011 Rajesh Ramanathan Partner Tmt Law Practice 32a, Krishna Street T. Nagar, Chennai N. SURYA SENTHIL ADVOCATE 20/04/2011 High Court 20 LAKSHMI DEVI S. ADVOCATE 20/04/2011 High Court 21 R. SATHISH KUMAR ADVOCATE 20/04/2011 R.Sathish Kumar Advocate, "Sivam", 56, Mylappa Street, Ayanavaram, Chennai Office: 336/166, Thambu Chetty Street, Parrys, Chennai ELIZSBETH PUTHRAN ADVOCATE 20/04/2011 Elizabeth Puthran B- 3, Kesavan Orchid, 5/7, North Mada Street Sri Nagar Colony, Saidapet, Chennai Tamil Nadu, India 23 AMINA ADVOCATE 20/04/2011 High Court 24 S. B. NIRMALATHA ADVOCATE 20/04/2011 High Court 25 K. PREMCHANDAR ADVOCATE 20/04/2011 Anand & Anand, Flat Ga, Ar Villa, New No.31 Old No.13 3rd Main Road, Gandhi

31 4 3 Nagar, Adyar, Ch GOWRI TIRUMURTHI ADVOCATE 20/04/2011 Anand & Anand, Flat Ga, Ar Villa, New No.31 Old No.13 3rd Main Road, Gandhi Nagar, Adyar, Ch RAMJI ADVOCATE 20/04/2011 High Court 28 A.A. MOHAN ADVOCATE 20/04/2011 Ceebros Building, Iii Floor, No.32, Cwnotaph Road, Teynampet, Ch ARUN C MOHAN ADVOCATE 20/04/2011 Arun.c.Mohan Ceebros Building, Iii Floor # 32, Cenotaph Road Teynampet, Chennai , India 30 SATHISH PARASARAN ADVOCATE 20/04/2011 No.8, 8th Street, Dr. Radhakrishnan Salai, Mylapore, Ch SRINIATH SRINIVASAN ADVOCATE 20/04/2011 High Court 32 RAJA PANNIR SELVAM ADVOCATE 20/04/2011 High Court 33 VIJEYKUMAR SUBRAMANIAN ADVOCATE 20/04/2011 High Court 34 A. RAMESH KUMAR ADVOCATE 20/04/2011 High Court 35 R. PREM KUMAR ADVOCATE 20/04/2011 M/s King & Partridge, Advocates Catholic Centre, 2nd Floor, 108,Armenian Street, Ch BALAKUMAR CHANDRASEKHARAN ADVOCATE 20/04/2011 High Court 37 ARIVAZAHAGAN ADVOCATE 20/04/2011 High Court 38 BALAJANAKI ADVOCATE 20/04/2011 New No.40, 35th Cross Street, Besant Nagar, Ch P. SARAVANAN ADVOCATE 20/04/2011 1o7, Angappa Naicken Street, 1st Floor, Chennai Palace Hotel, Ch ARUL SELVAM ADVOCATE 20/04/2011 Old No.3 New No.5th East Street Kamraj Nagar Thiruvanmiyur Ch SATHIYA NARAYANAN ADVOCATE 20/04/2011 S. Sathiyanarayanan Wise &Worth, Advocates &

32 5 4 Consultants F1, Prp Block - Rose Park No.10, Santhi Nagar 1st Cross Adambakkam, Chennai MADHAN BABU ADVOCATE 20/04/2011 No.8, 8th Street, Dr. Radhakrishnan Salai, Mylapore, Ch SRINIVASAN BALAKRISHNAN ASHOK KUMAR. J DAGA ADVOCATE 20/04/2011 High Court ADVOCATE 20/04/2011 High Court 45 GLADYS DANIEL ADVOCATE 20/04/2011 High Court 46 L. RAMPRASAD ADVOCATE 20/04/2011 High Court 47 Venkat redy Donti Reddy ADVOCATE 20/04/2011 Flat No. G-4, & 544, Laxmi Nilayam Apts, Adj: Ymca Ground, Narayanaguda, Hyderabad - 27

33 6.. IP ~~ Intellectual Property Appellate Board Guna Complex Annexe-1,. 2"d Floor, 443 Anna Salai, Teynampet, Chennai-18 Tele: /03 Fax: Website: No: I /3/20 16-IP AB I f>..dm.._ 3C:, Dated: NOTIFICATION In exercise of powers conferred under Section 83 & 84 of the Trade Marks Act, 1999 and Section 117 B of the Patents Ac, 1970 read with Section 92(1) of the Trade Marks Act 1999, the Hon' ble Acting Chairman as being the competent authority under Section 87 ( 1) of Trademarks Act, directs for constitution of Deputy Registrar Court for taking up cases for hearing with reference to administrative process of maintainability of the abandonment of Applications/appeals on account of defects pending under S.R. stage including receipt of filing counterstatements, replies, issuance of notices and extending extension up to 30 days to the parties in miscellaneous proceedings related appeals I applications filed before the IPAB registry. It has been decided that henceforth onwards, the Deputy Registrar will hold Court regularly in Chennai registry and shall take up all matters under Trademarks Act, Patents Act, and Geographical Indication Act, to complete the administrative process with reference to maintainability of the abandonment of Applications/appeals on account of defects pending under S.R. stage including receipt of filing counterstatements, replies, issuance of notices and extending extension up to 30 days to the parties in miscellaneous proceedings related appeals I applications filed before the. IP AB registry, henceforth the TP AB registry shall list and placed all pending matters before the Deputy Registrar for completion of miscellaneous proceedings in Chennai as well as as and when the court constituted for other Places such as Ahmadabad, Delhi, Kolkata and Mumbai. Sd/- (SANJEEV K. CHASW AL) ACTING CHAIRMAN, IPAB, CHENNAI

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35 7 1/1&2017 lndan Tax Home: IPR IPAB ORAI fTMICH <D Ads ( Court Jud!IB!!!ent ) ( Patent Application ) (....,us..,.ptp,._,_,pate=nt.. ~> Indian Tax Home Provides Updates on Indian Tax Primarily with near realtime news from across the Globe too... THURSDAY, JANUARY' 10, 2013 IPR - IPAB - ORA/267/2008/TM/CH Misc. Petition No. Transferred Application/Appeal No: Original Application/Appeal No Applicant/Appellant SHRI SHYAM SINGH Respondent Versus ORA/267/2008frM/CH Representative BFS LEGAL Representative HAVE A QUERY? PAY At.m GET ANSWERED IN 41 HOURS ONLY Only One(1) Query Shall be answered per payment. TRANSLATE Search ITH SHRI MANOHAR SINGH & ANOTHER - CORAM A.V. NATHAN ASSOCIATES HON'BLE SMT. JUSTlCE PRABHA SRIDEVAN HON'BLE MS S. USHA Chairman Vice Chainnan ORDER SHEET DOWNLOAD APP 0 GOOGI.E PLAY stltuaqf llllllrili I) AJllll!lr;ant/ Awl!ant: 1)-~ )-~ ~ ll Ru!)OD!IIInt: 1)-~ -- ~ Counsel for Applicant/ Appellant Counsel for Respondent Shri Akhil R. Bansali Shri Sivaraman Vaidyanathan This application has been filed for grant of time to the counter statement. The respondent ought to have bee filed it on or before Twenty-seven months been passed. It is only thereafter they have moved this application. When the matter came up first, the applicant had only filed the application for extension of time without the counter statement. We informed the counsel that if the counter statement does not accompany the application, it will not be considered at all. It is after this, the counter statement has come forth and was filed on In the Form 3 that was filed for extension of time for 27 FUNNY JOKES ANDROID APP lilp"jiindantachome.blogapci.in/ fipr-ipeb-cra ch.tunl 117

36 8 1/ )-~ Repreltntati n: Indian Tax Home: IPR - IPAB- ORN /TM/CH months, it is stated that by oversight, relevant file was misplaced amongst the closed/decreed files in the counsel's office and that when the hearing notice dated was received on , the respondent's counsel realized the lapse. Thereafter, this Form 3 was filed and subsequently the counter statement was filed as per our directions. We observed that when the delay is 27 months, mere letter addressed to the Registry will not suffice. Therefore, the counsel prayed for time to file the affidavit to support their case for condonation of long delay. 2. Today, this affidavit by the first respondent has been filed. According to this affidavit as far back to 2009, the instructions were given to the counsel and only now the deponent was informed that through oversight the file was mis-placed amongst the closed/decreed files in the office of the advocate. The deponent states that he was under the bonafide belief that the relevant counter statement would have been filed within the prescribed time. The aforesaid oversight was discovered only upon receipt of the hearing notice. The deponent has stated in para 7 of the affidavit that no prejudice will be caused to the applicant if the counter statement is received today. He also states that "I have taken care to ensure that, save invoices which show the continuity of my use of the impugned mark, I have not produced and/or relief upon any document(s) obtained/issued during the period of delay to substantiate my case." BLOG ARCHIVE (11) 3. The learned counsel for the applicant submitted thjl 2015 <125 > while there can be no dispute that there has been a hu~ 2o14 (790) delay, the delay must be condoned because the party wae 2o13 (387) not to be blamed for the mistake, if any, that had occurred indecambar(16) the counsel's office. He also submitted that no prejudice will November (80) be caused if after the receipt of counter statement theoctober< 1 > matter is argued. It is also stated that no document hassaptamber< 9 > been filed along with the counter statement which is a August 166 < ) document pending this litigation. Therefore, it cannot be July (7 1 ) June (7) said that because of the delay any material advantage had May (1) accrued to the respondent. March (4) February (12) 4. The Learned Counsel for the respondent I applicantjanuary c2o) on the other hand, submitted that on the strength of t~ 2012 < 557 > impugned trade mark, the respondent had obtain~ 2011 < 517 > injunctions in various courts and this advantage h~ 2001 < 13 ) continued in his favour only because of the long delay in filing the counter statement. The Learned Counsel also submitted that the reason given is not really substantial to justify the ground for extension of time. htlp:llirdantaxhome.blogspot.irv /ipr-ipab-aa tmch.html 2!7

37 9 1/ Indian Tax Home: IPR - IPAB- ORN /TM/CH 5. Before we consider the merits of this matter, we think certain procedural aspects must be made clear and this will apply to everyone. Rule 14 of The Intellectual Property Appellate Board (Procedure) Rules, 2003 deals with extension of time and it provides for extension of time for doing any act, whether the time so specified has expired or not. This extension of time may also be made subject to such conditions as the Board may think fit to impose. Subrule 2 of Rule 14 clearly indicates that the Appellate Board is not required to hear the parties before disposing of cmvourjte LINKS application for extension of time. It appears that hitherto ttfo::~,!aoociates Deputy Registrar had under Rule 27 been condoning t'-rachubaachu Prop Wonder delay or extending the time as the case may be for doilltjdicmtarlfome any act. This was done under the understanding of Ru~;;eoEver 27(. ) h' h d ~ IX W IC rea S as 10 OWS.- OolyKanoon Shoppers Orbit 27. (ix) to decide questions relating to extension of tirrjrc:;~ipz in respect of filing of counter statement, reply, BSENSETRADINGTIPS Only Tech Guru rejoinder etc. Domain Nukkad Sarkari Naukrl Monstar 6. When Rule 14 is clear that it is the discretion of ttii~:~ ~::a:rim:harat Appellate Board to grant extension of time it can only mec:ffla~j~iert.work Epg~neenng Careers that the extension of time is within the sole discretion I.JndGovtJobs Intellectual Property Appellate Board (IPAB) and no one else. This is further reinforced by the phrase "Subject to such conditions as it may think fit to impose... ". Here the word 'it' refers to the Board. Therefore, the conditions that should be imposed while extending the time is by the Board which may deem fit to do so. 7. Sub-rule 2 of Rule 14 speaks of the Board not being required to hear the parties. Therefore, right to grant extension of time with or without conditions and the right to refuse extension of time is exclusively within the discretion of the Appellate Board. No other officer or person can assume this power. If we were to construe Rule 27(ix) as granting the power to Deputy Registrar it would run contrary to the scope of Rule 14. If we read Rule 27, we find that the functions of the Deputy Registrar which is of course subject to orders of the Chairman is to receive applications, appeals, counter statements, replies and other documents. He can decide all questions arising out of the scrutiny of the appeals which means if the appeals are not in conformity with the rules, the Deputy Registrar can make the necessary required corrections before they are registered. The Deputy Registrar may also to require any application, appeal, counter statement, replies presented to the Appellate Board to be amended so that they are in confirmity with the rules. htlp:llirdantaxhome.blogspot.irv /ipr-ipab-aa tmch.html 317

38 10 1/ Indian Tax Home: IPR - IPAB- ORN /TM/CH 8. The Deputy Registrar may fix dates of hearing of the applications or appeals or other proceedings and issue notices therefore subject to the directions of the Chairman. He may direct any formal amendment of records. He may order supply of copies of documents to parties to proceedings. He may grant leave to inspect the records or requisition of records from any court, Registrar of Trade Marks or other authority. It is seen that on consideration of all these functions, the Deputy Registrar does not perform any function which is even faintly judicial, they are ministerial. To grant him the power of condoning the delay or extending the time, would be implicitly granting him the power to refuse to condone the delay or refuse to grant extension of time. Therefore, the entire proceedings which must be adjudicated by the Board would come to a conclusion by the order the Deputy Registrar if we understand section 27(ix) to mean that the Deputy Registrar can extend time. We do not think this is an appropriate understanding of Rule 27 that the Deputy Registrar is to decide question for extension of time and not to decide the right to have time extended. For example, if there is any doubt as to the exact number of days of delay, the officer may decide. 9. Therefore, hereafter all applications made under Form 3 will be placed before the Board. As per Rule 14 (2) the Board need not hear the parties before disposing of the application. On a perusal of the papers, the Board will, if satisfied that sufficient cause is made out, grant extension of time. While doing so, the Board may insist that on the date by which the time is so extended, the counter statement shall be filed. The Board, may if it thinks fit, post the matter for hearing. But this is entirely at the discretion of the Board. 10. We find that in a similar matter the Hon'ble Calcutta High Court in W.P. 669 (W) of 2010 in Prabhu Shankar Agarwal & Others vs. Registrar of Trade Marks & Others held as follows:- "The bonafide or otherwise of the applicant has to be tested by the Board while it considers the petition and it is entirely the discretion of the Board to accept or to reject the prayer for tendering additional evidence. It has not been demonstrated before me that no miscellaneous petition could be filed in terms of the extent statutory provisions once judgment is reserved by the Board. It is true that in terms of Rule 27(2) of the Rules the Deputy Registrar is empowered to htlp:llirdantaxhome.blogspot.irv /ipr-ipab-aa tmch.html 417

39 11 1/ Indian Tax Home: IPR - IPAB- ORN /TM/CH decide all questions arising out of scrutiny of appeals and applications before they are registered but, in my considered view, the scrutiny must be directed towards ascertaining whether the applications and the appeals are in the prescribed form or not and not towards the stage of filing such applications, which ought to fall for consideration of the Board. In the present case, the Deputy Registrar in returning the miscellaneous petition appears to have acted clearly beyond his jurisdiction." 11. We found that the practice hitherto adopted by the advocates is to file multiple Form 3s without even annexing the counter statements and taking advantage of multiple orders of extension of time. When this Board has come into existence for expeditious disposal of Intellectual Property disputes, such a practice must be nipped, since it runs counter to the object of the Act. 12. Now we come to the present case. The delay here is very long i.e. 27 months. But strictly speaking, no prejudice has been caused to the applicant merely by virtue of this delay except of course the burden of orders of injunction operating against the applicant. The respondent has stated on oath that he has not produced any document which has come up pending the litigation. 13. In these circumstances, we grant the prayer of the application on a payment of cost of Rs. 30,000/- payable to the applicant on or before one week from the date of receipt of this order. 14. The matter is adjourned to 22nd July 2011 on which date the applicant shall furnish proof of payment of cost, and we will proceed to hear the main matter. VICE CHAIRMAN CHAIRMAN Posted by Simply Indian Tax at 12:56 PM J G+l Recommend this on Google Labels: Intellectual Property Rights No comments: Post a Comment htlp:llirdantaxhome.blogspot.irv /ipr-ipab-aa tmch.html 517

40 IN THE HIGH COURT OF JUDICATURE AT MADRAS (Special Original Jurisdiction) W.P. No. of 2017 Intellectual Property Association of South India represented by its President Mr. Perumbulavil Radhakrishnan Petitioner.vs. 1. Union of India, represented by its Secretary, Department of Industrial Policy & Promotion, 2. Intellectual Property Appellate Board Respondents TYPED SET OF PAPERS FILED BY THE PETITIONER M/s. MADHAN BABU ARUN C. MOHAN Counsel for Petitioner