Trademarks Act, 1999 – s.89A – Finance Act, 2017 – s.184 – Continuation of the incumbent Chairperson – Application for – Applicant sought directions for continuation of the incumbent Chairperson of the Intellectual Property Appellate Board (IPAB), till a new Chairperson is appointed – It was urged that s.89A inserted in the TM Act stipulates that after the commencement of the Finance Act, 2017, the term of office of appointments to the board would be governed by the provisions of s.184 – In terms of s.184 of the 2017 Act, the outer limit prescribed the age limit of the Chairperson of the board as 70 years – Applicant also relied on s. 84(2) of the TM Act and urged that there could be no bench without a judicial member – Held: On 26.07.2017, the present incumbent was given the additional charge of the Chairman in the IPAB, i.e. the Board, in terms of the then 2017 Rules, for a period of three years – However, it was later amended for a period upto 21.09.2019 by the Central Government – The Judgment in Roger Mathew was delivered on 13.11.2019 and it quashed the 2017 Rules – In terms of the interim arrangement directed by the majority judgment in Rojer Mathew, 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 s.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 – The 2017 Rules had fixed the tenure limits of Chairpersons and members – In terms of those Rules of 2017 the tenure of the present incumbent ended on 21.09.2019 – As the rules were later struck down only on 13.11.2019 – At that time the prevailing interim orders and clarifications in Kudrat Sandhu 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 – As far as submission that there could be no bench without the judicial member is concerned, the s.85 of the TM Act reveal that there is no bar for 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 the instant case, the incumbent five technical members all hold legal qualifications – These members has practical legal experience of ten to fifteen years – Therefore, the argument that the technical members, in their position at the board as of now, cannot function without a Chairperson, is unsustainable.
Dismissing the application, the Court
HELD: 1. The present incumbent to the office of Chairperson of the Board was appointed as the Chairman, Appellate Tribunal for Forfeited Property (ATFP). 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 extant 2017 Rules, for a period of three years – or until further orders, whichever was earlier. 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. [Paras 17 and 18][812-B-C; 813-A-B]
2. 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, 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 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 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][814-F-H; 815-A-C]
3. 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 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 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. [Para 23][815-D-H; 816-A-B]
4. The submissions of the applicant that the Board cannot function without a judicial member 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 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 ViceChairperson”. 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][816-F-H; 817-A-D; 818-A-B]
Rojer Mathew v. South Indian Bank Ltd., (2020) 6 SCC
1 : [2019] 16 SCR 1 – followed.
Madras Bar Association v Union of India (2020) SCC OnLine SC 962; Kudrat Sandhu v Union of India 2018 SCC Online 1335; Kudrat Sandhu v Union of India 2018 (18) SCC 796 – referred to.
As published in the Supreme Court Reports, Supreme Court of India. Text from the Indian Supreme Court Judgments open data set (Dattam Labs), CC BY 4.0.
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