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There is no bar for a technical member to be appointed as a regular chairperson: SC

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" (Para 25)

The International Association for Protection of Intellectual Property (India Group) v. Union of India

Miscellaneous Application No.2219/2020 in W.P. (C) No.1431/2019

12 February 2021

The single bench of Hon'ble Supreme Court consisting of Justice S.Ravindra Bhat dismissed the plea of the appellant seeking an extension of tenure of the incumbent Chairperson of the Intellectual Property.

The parties contended that (i) the Board's appointment should be governed through the parent Act, the Trademarks Act, as per Rojer Mathew's judgment. (ii) there is no validity of Section 86 of T.M. Act after the enactment of Section 89A in the given act as the present incumbent was appointed after this amendment. (iii) Another contention was from Section 84(2) of the T.M. Act, which states that "there can be no bench without a Judicial member," In the present case, Justice Manmohan Singh was the only judicial member in the Board, and that is why their term should be extended.

To reach a conclusion, the court referred to the relevant provision of Part XIV of the Finance Act 2017 and applied the principles used to decide Rojer Mathew v South India Bank Ltd, (2020) 6 SCC 1 and, held that:

This is because the Rules of 2017 had fixed the tenure limits of chairpersons and members of tribunals, including that of the Chairperson of the Board. 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 the 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. (Para 22)

For another argument that whether the pre-existing age and tenure limit applies after the insertion of Section 89A of the T.M. Act into the Finance Act 2017, the court replied that:

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 the 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 the incumbent holding office of Chairperson of the Board had ended on 21.09.2019. (Para 23)

Answering the contention of whether the court should extend the chairman's tenure on the argument that the Board cannot function without a judicial member, the court referred to section 84 and 87 of the Trade Marks Act and observed the following:

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. (Para 25)

Further, referring to section 85 of the Trade Marks Act, the Court noted:

Furthermore, significantly, Section 85 inter alia stipulates the qualifications for the post of chairperson or vice-chairperson. The relevant provisions of this section reveal 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 (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 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. (Para 25)

Concluding, the Court held:

In view of the above conclusions, this court holds that the applicant cannot be granted any relief. (para 26)

Subsequently, dismissed the application.

Swadheen Singh



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