THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF INTELLECTUAL PROPERTY (INDIA GROUP) versus UNION OF INDIA on 12 February 2021

THE INTERNATIONAL ASSOCIATION FOR PROTECTIONOF INTELLECTUAL PROPERTY (INDIA GROUP)

v.

UNION OF INDIA

(Miscellaneous Application No.2219 of 2020)

In

(W.P.(C) No.1431 of 2019)

FEBRUARY 12, 2021

[L. NAGESWARA RAO, HEMANT GUPTA

AND S. RAVINDRA BHAT, JJ.]

Trademarks Act, 1999 – s.89A – Finance Act, 2017 – s.184 –Continuation of the incumbent Chairperson – Application for –Applicant sought directions for continuation of the incumbentChairperson of the Intellectual Property Appellate Board (IPAB),till a new Chairperson is appointed – It was urged that s.89A insertedin the TM Act stipulates that after the commencement of the FinanceAct, 2017, the term of office of appointments to the board would begoverned by the provisions of s.184 – In terms of s.184 of the 2017Act, the outer limit prescribed the age limit of the Chairperson ofthe board as 70 years – Applicant also relied on s. 84(2) of the TMAct and urged that there could be no bench without a judicial member– Held: On 26.07.2017, the present incumbent was given theadditional charge of the Chairman in the IPAB, i.e. the Board, interms 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 CentralGovernment – The Judgment in Roger Mathew was delivered on13.11.2019 and it quashed the 2017 Rules – In terms of the interimarrangement directed by the majority judgment in Rojer Mathew,the appointments to Tribunals/Appellate Tribunals were to be “interms of the respective statutes before the enactment of the FinanceBill, 2017..”, the amendments brought about through s.184, in termsof the maximum age up to which any Member or Chairperson canhold office in a Tribunal could not apply in the case of the Board –The 2017 Rules had fixed the tenure limits of Chairpersons andmembers – In terms of those Rules of 2017 the tenure of the present

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Aincumbent ended on 21.09.2019 – As the rules were later struckdown only on 13.11.2019 – At that time the prevailing interim ordersand clarifications in Kudrat Sandhu stated that the maximum tenureof such members or chairpersons would be as stipulated in the parentenactments, before the coming into force of the Finance Act, 2017,or were expressed to be for a maximum of 3 years, in the case ofBChairpersons – The period had ended, so far as the applicant isconcerned, on 21.09.2019 – As far as submission that there couldbe no bench without the judicial member is concerned, the s.85 ofthe TM Act reveal that there is no bar for technical member to beappointed as a regular Chairperson, provided she or he has forC“at least two years, held the office of a Vice-Chairperson” – In theinstant case, the incumbent five technical members all hold legalqualifications – These members has practical legal experience often to fifteen years – Therefore, the argument that the technicalmembers, in their position at the board as of now, cannot functionwithout a Chairperson, is unsustainable.DDismissing the application, the Court HELD: 1. The present incumbent to the office ofChairperson of the Board was appointed as the Chairman,Appellate Tribunal for Forfeited Property (ATFP). On 26.07.2017,Ehe was also given the additional charge of the Chairman in theIPAB, i.e. the Board, in terms of the then extant 2017 Rules, fora period of three years – or until further orders, whichever wasearlier. The order of appointment – as Chairperson of the Board– was amended on 29.12.2017 by the Central Government. Thislater order stated that the tenure of his appointment as ChairmanFof the Board was upto 21.09.2019 or till further orders, whicheverwas earlier. [Paras 17 and 18][812-B-C; 813-A-B]

2. The arguments advanced on behalf of the applicant thatthe incumbent chairperson continued to remain in office in viewof the declaration of law by Rojer Mathew, is insubstantial andGcannot be countenanced. The other reason for not accepting thiscontention is that if, for a moment it were to be assumed that interms of the interim arrangement directed by the majorityjudgment in Rojer Mathew, the appointments to Tribunals/

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Appellate Tribunals were to be “in terms of the respective statutesbefore the enactment of the Finance Bill, 2017..”, the amendmentsbrought about through Sections 184, in terms of the maximumage up to which any Member or Chairperson can hold office in aTribunal could not apply in the case of the Board. This is becausethe Rules of 2017 had fixed the tenure limits of chairpersons andmembers of tribunals, including that of the chairperson of theboard. In terms of those Rules, (i.e., the rules of 2017) the tenureof the present incumbent ended on 21.09.2019. As noticed earlier,the rules were ultimately struck down only on 13.11.2019. Atthat time, the only order prevailing, which had directed statusquo with respect to tenure and age limits for members andchairpersons of various tribunals, were the interim orders andclarifications in Kudrat Sandhu, dated 09.02.2018; 20.03.2018;16.07.2018 and 21.08.2018. These had stated that the maximumtenure of such members or chairpersons would be as stipulatedin the parent enactments, before the coming into force of theFinance Act, 2017, or were expressed to be for a maximum of 3years, in the case of chairpersons. The period had ended, so faras 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 theFinance Act, 2017 had inserted Section 89A of the TM Act,(introduced by Section 161 of the former Act) which states thatthe tenure of office and maximum age of retirement would begoverned 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 thepre-existing age and tenure limits (the existing tenure and agelimits have been indicated in Section 86 of the TM Act). However,the Finance Act merely stipulates the potential maximum agelimits and tenure limits. In the case of Chairpersons, the maximumage limit prescribed was seventy years (by virtue of secondproviso to Section 184 [1]). However, by virtue of the first provisoto Section 184 (1), members or chairpersons could be appointed“for such term as specified in the rules made by the CentralGovernment but not exceeding five years from the date on which heenters upon his office”. Thus, the outer limit of the tenure was five A

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Ayears. As noticed earlier, the Central Government had fixed thetenure of chairperson of the board to be three years. By the timethis rule was held unconstitutional, the tenure of the incumbentholding office of chairperson, of the board ended, on 21.09.2019.The final judgment in Rojer Mathew, could not have per se beenapplied to the facts of this case. The applicant’s contentions inBthis regard are of no avail; it is after the judgment in Madras BarAssociation that the tenure has been mandated to be five years.It is to be noticed that even the 2020 Rules did not prescribe themaximum tenure; it rather confined the tenure to four years. Inthe facts of this case, even if that were to be applied – assumingCsuch a course to be available, the four-year period too ended on21.09.2020. [Para 23][815-D-H; 816-A-B]

4. The submissions of the applicant that the Board cannotfunction without a judicial member are meritless. Section 84 (2)of the TM Act no doubt states that a bench of the board shallDconsist 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 Section84(3)(a) that a chairperson may, “in addition to discharging thefunctions of the Judicial Member or Technical Member of the Benchto which he is appointed, discharge the functions of the JudicialEMember or, as the case may be, the Technical Member, of any otherBench.” Thus, in the absence of any member, the chairpersonmay, if the occasion so arises, act as technical or judicial member.Section 87 enables a vice-chairperson, or as the case may be thesenior-most member of the board to act as chairperson in theFevent of a vacancy to that position, or in the event of theincumbent’s inability to function in the post. Furthermore,significantly, Section 85 inter alia stipulates the qualifications forthe post of chairperson or vice-chairperson. The relevantprovisions of this section reveal that there is no bar for a technicalmember to be appointed as a regular chairperson, provided sheGor he has for “at least two years, held the office of a Vice-Chairperson”. In fact, the incumbent five technical members allhold legal qualifications (three of them holding masters in law,including one who holds a post-doctoral qualification). Four of H

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these incumbent members were practising advocates inspecialized fields of intellectual property (trademarks, andcopyright) and one technical member (patents) had experiencein the Patent Office. These members had practical legalexperience of ten to fifteen years. The fact that they wereappointed as technical members cannot obfuscate the fact thatthey are legally trained and qualified. Therefore, the argumentthat the technical members, in their position at the board as ofnow, cannot function without a chairperson, is unsustainable.[Para 25][816-F-H; 817-A-D; 818-A-B]

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Rojer Mathew v. South Indian Bank Ltd., (2020) 6 SCC1 : [2019] 16 SCR 1 – followed.

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Madras Bar Association v Union of India (2020) SCCOnLine SC 962; Kudrat Sandhu v Union of India 2018SCC Online 1335; Kudrat Sandhu v Union of India2018 (18) SCC 796 – referred to.

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Case Law Reference[2019] 16 SCR 1 followedPara 32018 (18) SCC 796referred toPara 21

CIVIL ORIGINAL JURISDICTION : M.A. No. 2219 of 2020 inEWrit Petition (Civil) No. 1431 Of 2019

(Under Article 32 of The Constitution Of India)

K K Venugopal, AG, Balbir Singh, ASG, A.S.Chandhiok, SiddharthLuthra, R Balasubramanium, Sr. Advs., Hemant Singh, Ms. Mamta R.Jha, Waseem Shuaib Ahmed, Sambhav Jain, Ms. Simran Kohli, RiteshKumar, Ayush Kaushik, Ms. Ankita Tiwari, Lakshay Mehta, Mohit D.Ram, Mohammed Sadique TA, Abraham Mathews, Ms. Anu K Joy,Alim Anvar, Mohit D. Ram, Ms. Shradha Deshmukh, Ms. ChinmayeeChandra, Shyam Gopal, Advs. for the appearing parties.

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The Judgment of the Court was delivered by G

S. RAVINDRA BHAT, J.

1. This judgement will dispose of an application by which directionsare sought that till a new chairperson of the Intellectual Property AppellateBoard (hereafter referred to as “the board” or “IPAB”), is appointed, H

Athe incumbent (whose tenure had been extended by interim orders ofthis court, up to 31.12.2020) should continue to function as Chairperson.

2. The applicant (the International Association for Protection ofIntellectual Property [India Group]) had preferred a Writ Petition (WP(C)1431/2019), which was disposed of by this court by a judgement alongBwith a batch of other petitions and applications on 27[th] November 2020,in the judgement reported as Madras Bar Association v Union ofIndia[1]. The applicant seeks extension of the term of the incumbentChairperson of the board stating that his appointment was made undersection 89A of the Trademarks Act, 1999 (“TM Act” hereafter). Theapplicant urges that Section 184 of the Finance Act, 2017, prescribes theCterm of office and the conditions of service of Chairperson and membersof various tribunals including that of the Board. Section 161 of the FinanceAct inserted Section 89A to the TM Act-which stipulates that the termof office of appointments to the board after the date of commencementof the Finance Act would be governed by the provisions of the SectionD184 of the said Finance Act. The outer limit prescribing the age limit ofthe chairperson of the board is 70 years, in terms of Section 184.

3. It is contended that in the judgement in Rojer Mathew[2] thiscourt had directed that appointments made to the board preceding therules framed in 2020 under the Finance Act within (hereafter the 2020ERules) were governed by the parent enactment. Reliance is placed onthe 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 TrademarksAct (hereafter the ‘TM Act’). In this context, it is contended that sincethe outer limit of the tenure of the chairperson is 70 years under theparent Act, i.e. the TM Act, the age of 65 years contemplated underFSection 86 of that Act no longer applies.

4. Learned counsel contrasts Section 86 and Section 89 of theTM Act and contends that though Section 86 on the one hand prescribesthe outer age limit (for the tenure of chairperson) as 65 years, that isover borne by the provisions of section 89A, which states that the termsGand conditions hitherto applicable would no longer be so and that in mattersof conditions of service and tenure of appointment, the provisions ofsection 184 of the Finance Act would apply. It is contended by senior 1 (2020) SCC OnLine SC 962.2 H

2 Rojer Mathew v. South Indian Bank Ltd., (2020) 6 SCC 1.

counsel that the Rules were originally framed with effect from01.06.2017, under which the present incumbent was appointed. Theserules were set aside by Rojer Mathew, in which all sitting members andchairpersons of various tribunals were protected, till new rules wereframed. The Rules framed in 2020, have now been substantially readdown 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). Aclarification of this is essential, given that in law, the outer limit has nowbeen extended to 70 years. The attention of this court is also drawn topara 53 (ix) of the judgement of this court dated 27[th ]November 2020.

5. Learned counsel relied upon the said judgement. It was arguedthat the orders made by this court during the pendency of that case, tillfinal judgment, i.e. dated 27th of November, 2020 protected the tenuresof all incumbent tribunal members and their chairpersons. Specificreliance was placed upon the order dated 16[th ]September 2020, whichhad extended the tenure of office of all incumbent members of all tribunals,to 31[st ]December, 2020. The applicant also urged that it is essential thatthere is continuity and that taking into consideration the workload of theboard, it is absolutely essential that it is headed by a properly qualifiedchairperson.

6. The learned senior counsel for applicant particularly relies onSection 84(2) of the TM Act and urges that there can be no benchwithout a judicial member. It is submitted that at the moment none of themembers of the board are judicial appointees, but rather are technicalmembers. It is submitted that the board does not even have a Vice-Chairman, who can in the absence of the Chairperson officiate as theacting Chairperson. Therefore, it is imperative that the clarifications anddirections sought should be granted.

7. The application was opposed on behalf of certain third partieswho urge that this court should not grant the relief which the applicantseeks. In this regard, it is pointed out that the tenure of office in terms ofthe order of appointment of the present incumbent to the office ofchairperson of the board clearly stipulated that the tenure for which hecould continue to serve on the board was till 21[st]September 2019. It iscontended in this context that the original appointment was made whenthe incumbent chairperson of the board was holding another office aschairperson of a quasi-judicial body. The order of appointment, originally AB

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Amade in 2017, no doubt did not indicate a tenure; however according toapplicable law (i.e. the Rules of 2017) the maximum tenure was 3 years.However, that order was amended to specifically read that the orderthat the appointment would cease upon completion of a specific date,i.e. 21.09.2019.B8. The third-party objectors also opposed the interpretation givento Section 86 and 89A. It was contended that the change brought aboutby section 89A was merely to indicate that the tenure of office of thechairperson and members would thenceforth (i.e. after the enactmentand coming into force of the Finance Act of 2017) be in accordancewith Section 184 of the Finance Act. It is urged in this context thatCSection 184 does not ipso facto prescribe or indicate any term ofappointment or tenure, except to enumerate outer limits of tenure termsand maximum age for members or chairpersons of tribunals to hold office.The legislation leaves the matter to the rules that were to be framedunder the said Finance Act. It is submitted in other words that, the ActDper se does not prescribe any terms, but rather indicates outer limits.Since the entire conditions of service, including the indicative tenure ofoffice was to be prescribed in respect of each tribunal by the rules, evenif for a moment, the applicant’s contentions were to be understood asmeaning that the incumbent was appointed first under the old rules of2017, his term of office nevertheless ended in September 2019. ThisEwas before the judgement in Rojer Matthew was delivered. This courtin Rojer Matthew specifically stated that as the then existing rules framedin 2017 were held to be unconstitutional, a window of continuing in office,in terms of the parent enactment, was applicable. It is submitted that inthe context of the present incumbent of the board, the tenure of officeFobviously could not have been extended since the outer limit under theparent act was 65 years.

Relevant provisions

Relevant provisions

9. By virtue of the provisions of Part XIV of the Finance Act2017, 25 (twenty-five) central enactments were amended so that, fromGthe appointed date, firstly, provisions relating to terms and conditions ofservice of the members of those tribunals were substituted with provisionsallowing the Central Government to specify the same with rules underthe Finance Act. Secondly, eight existing tribunals established underdifferent legislations (specified in the Ninth Schedule) were abolishedHand 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 wasauthorized to frame delegated legislation (rules) spelling out the eligibilitycriteria, selection process, removal, salaries and allowances, tenure andother terms and conditions of service for the remaining 19 tribunals(specified in the Eighth Schedule). The constitutional validity of Section184 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 abatch of writ petitions and appeals, of which judgment was rendered inRojer Mathew v South Indian Bank Ltd. (supra).The judgment,delivered by a bench of five judges, upheld Section 184. However, the2017 Rules were held to be contrary to the constitutional scheme asinterpreted by several previous rulings of Constitution Benches. As aresult of that judgment, the Central Government framed fresh rules in2020 (hereafter “2020 Rules”) which were again questioned in theMadras Bar Association case. The Madras Bar Association case isa sequel (to Rojer Mathew), by which this court considered andpronounced upon the validity of the 2020 Rules, and read down severalof 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”, whereverit occurs, the word “Chairperson” or “Vice-Chairperson”shall be substituted; (b) in section 83, after the words “under this Act”, the wordsand figures “and under the Copyright Act, 1957” shall beinserted;

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

“89A. Notwithstanding anything in this Act, the qualifications,appointment, term of office, salaries and allowances,resignation, removal and other terms and conditions of serviceof the Chairperson, Vice-Chairperson and other Members ofthe Appellate Board appointed after the commencement ofPart XIV of Chapter VI of the Finance Act, 2017, shall be AB

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Agoverned by the provisions of section 184 of that Act: Providedthat the Chairperson, Vice-Chairperson and other Membersappointed before the commencement of Part XIV of ChapterVI of the Finance Act, 2017, shall continue to be governedby the provisions of this Act, and the rules made thereunderas if the provisions of section 184 of the Finance Act, 2017,Bhad not come into force.”.

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

“S.—CONDITIONS OF SERVICE OF CHAIRPERSONCAND MEMBERS OF TRIBUNALS, APPELLATETRIBUNALS AND OTHER AUTHORITIES

183. Notwithstanding anything to the contrary contained inthe provisions of the Acts specified in column (3) of the EighthSchedule, on and from the appointed day, provisions of section184 shall apply to the Chairperson, Vice-Chairperson,Chairman, Vice- Chairman, President, Vice-President,Presiding Officer or Member of the Tribunal, AppellateTribunal or, as the case may be, other Authorities as specifiedin column (2) of the said Schedule:

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Provided that the provisions of section 184 shall not apply tothe Chairperson, Vice-Chairperson, Chairman, Vice-Chairman, President, Vice-President, Presiding Officer or, asthe case may be, Member holding such office as suchimmediately before the appointed day. Qualifications, termsand conditions of service of Chairperson and Member.

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

184. (1) The Central Government may, by notification, makerules to provide for qualifications, appointment, term of office,salaries and allowances, resignation, removal and the otherterms 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 Authoritiesas specified in column (2) of the Eighth Schedule:

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Provided that the Chairperson, Vice-Chairperson, Chairman,Vice-Chairman, President, Vice-President, Presiding Officeror Member of the Tribunal, Appellate Tribunal or otherAuthority shall hold office for such term as specified in therules made by the Central Government but not exceeding fiveyears from the date on which he enters upon his office andshall 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 afterhe has attained such age as specified in the rules made bythe Central Government which shall not exceed—

(a) in the case of Chairperson, Chairman or President, theage of seventy years; (b) in the case of Vice-Chairperson, Vice-Chairman, Vice-President, Presiding Officer or any other Member, the age ofsixty-seven years:

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

12. In Rojer Mathew after pronouncing that the 2017 Rules wereunsustainable, and quashing them, with a direction to the CentralGovernment 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 Serviceof Members) Rules, 2017 have been struck down and severaldirections have been issued vide the majority judgment forframing of fresh set of rules, we, as an interim order, directthat appointments to the Tribunal/Appellate Tribunal and theterms and conditions of appointment shall be in terms of therespective statutes before the enactment of the Finance Bill,2017. However, liberty is granted to the Union of India to AB

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Aseek modification of this order after they have framed freshrules in accordance with the majority judgment. However, incase any additional benefits concerning the salaries andemoluments have been granted under the Finance Act, theyshall not be withdrawn and will be continued. These wouldequally apply to all new Members.”B

13. The board has been set up by Section 83 of the TM Act toexercise the jurisdiction, powers and authority conferred on it by or underthat enactment. Section 84 prescribes the composition of the board, whichconsists of a chairperson, a vice chairperson “and such number ofother Members, as the Central Government may deem fit and, subjectCto the other provisions of this Act, the jurisdiction, powers andauthority of the Appellate Board may be exercised by Benchesthereof.”

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

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

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

(a) may, in addition to discharging the functions of the JudicialMember or Technical Member of the Bench to which he isappointed, discharge the functions of the Judicial MemberFor, as the case may be, the Technical Member, of any otherBench; (b) may transfer a Member from one Bench to another Bench;

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

15. Sections 86 and 87 read as follows:

“86. Term of office of Chairperson, Vice-Chairperson andother Members.—The Chairperson, Vice-Chairperson or otherH

Members shall hold office as such for a term of five yearsfrom the date on which he enters upon his office or until heattains,—

(a) in the case of Chairperson and Vice-Chairperson, the ageof sixty-five years; and (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 certaincircumstances—

(1) In the event of or any vacancy in the office of theChairperson by reasons of his death, resignation or otherwise,the Vice-Chairperson and in his absence the senior-mostMember shall act as Chairperson until the date on which anew 1 Chairperson, appointed in accordance with theprovisions of this Act to fill such vacancy, enters upon hisoffice.

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

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

“89A. Qualifications, terms and conditions of service ofChairperson, 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 serviceof the Chairperson, Vice-Chairperson and other Members ofthe Appellate Board appointed after the commencement ofPart XIV of Chapter VI of the Finance Act, 2017 (7 of 2017),shall be governed by the provisions of section 184 of thatAct:

Provided that the Chairperson, Vice-Chairperson and otherMembers appointed before the commencement of Part XIV of A

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812SUPREME COURT REPORTS

AChapter VI of the Finance Act, 2017 (7 of 2017), shall continueto be governed by the provisions of this Act, and the rulesmade thereunder as if the provisions of section 184 of theFinance Act, 2017, had not come into force”

17. The present incumbent to the office of Chairperson of theBBoard was appointed as the Chairman, Appellate Tribunal for ForfeitedProperty (ATFP). The terms and conditions under which he was appointedhave not been placed on record; however, it appears that the appointmentwas soon after he demitted office as Judge of the Delhi High Court,sometime after September 2016. On 26.07.2017, he was also given theadditional charge of the Chairman in the IPAB, i.e. the Board, in termsCof the then extant 2017 Rules, for a period of three years – or untilfurther orders, whichever was earlier. The said order of 20.07.2017 isextracted below:

F. No.P-24017/44/2017-IPR-I

Government of India

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Ministry of Commerce & Industry

Department of Industrial Policy & Promotion IPR – I section E

Udyog Bhawan, New Delhi – 110 011

ORDER

The President of India is pleased to appoint Justice (Retd.)Manmohan Singh, Chairman, Appellate Tribunal for ForfeitedProperty to the post of Chairman, in the Intellectual PropertyAppellate Board (IPAB), Chennai, in the scale of pay asprescribed in the Tribunal, Appellate Tribunals and otherAuthorities (Qualifications, Experience and other Conditionsof Service of Members) Rules, 2017, for a period of threeyears with effect from the date of assumption of charge to thepost, or until further orders, whichever is the earlier.

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(B.S. Nayak)

Under Secretary to the Govt. of India

Tel: 23061257"

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

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“No. P-24017/44/2017-IPR-I

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Government of India

Ministry of Commerce & Industry

Department of Industrial Policy & Promotion C

(IPR – Establishment Section)

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ORDER

In supersession of this Department’s earlier order dated 20[th]July, 2017, the President of India is pleased to entrust theadditional charge of the post of Chairman, IntellectualProperty Appellate Board (IPAB) to Justice (Retd.) ManmohanSingh, Chairman, Appellate Tribunal for Forfeited Property(ATFP) in addition to his current duties from the date ofassumption of charge of the post up to 21.09.2019 i.e. till histenure on the post of chairmen, ATFP or until further orders,whichever is earlier.”

(B.S. Nayak)F

Under Secretary to the Govt. of India

19. The judgment in Rojer Mathew by the five judge ConstitutionBench was delivered on 13.11.2019. That judgment pronounced uponthe validity of the 2017 Rules and quashed them. However, before the2017 Rules were declared unconstitutional, the tenure of the incumbentto the office of the Chairperson of the Board ended on 21.09.2019. ThisCourt recollects that the operation of the 2017 Rules had not beensuspended during the pendency of the petitions challenging them (i.e.

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ARojer Mathew batch of cases). During the pendency of the said batchof 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:

“(iii) The tenure of the Chairperson and the Judicial/BAdministrative/Expert/Technical Members of all the Tribunalsshall be for a period of five years or the maximum age thatwas fixed/determined under the old Acts and Rules;”

20. On 16.07.2018[3], the following directions in regard to the ageof the superannuation of Member of the Income Tax Appellate TribunalC(ITAT)were made:

“At this juncture, we may note that there is some confusionwith regard to the Income Tax Appellate Tribunal (ITAT) asregards the age of superannuation. We make it clear that theperson selected as Member of the ITAT will continue till theDage 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 clarifythe previous orders, in the context of the President and Members of theCustoms Excise and Service Tax Appellate Tribunal (CESTAT). It wasEexpressly stated that the tenure of members would be upto their attainingthe age of 62 and, in the case of the President (of CESTAT) the tenureage limit would be 65 years.[4]

22. Given these circumstances, the arguments advanced on behalfof the applicant that the incumbent chairperson continued to remain inFoffice in view of the declaration of law by Rojer Mathew, is insubstantialand cannot be countenanced. The other reason for not accepting thiscontention is that if, for a moment it were to be assumed that in terms ofthe interim arrangement directed by the majority judgment in RojerMathew (in para 224 extracted above), the appointments to Tribunals/Appellate Tribunals were to be “in terms of the respective statutesGbefore the enactment of the Finance Bill, 2017..”, the amendmentsbrought about through Sections 184, in terms of the maximum age up towhich any Member or Chairperson can hold office in a Tribunal could 3 Reported as Kudrat Sandhu v Union of India 2018 SCC Online 1335 (SC)H4 This order is reported as Kudrat Sandhu v Union of India 2018 (18) SCC 796

not apply in the case of the Board. This is because the Rules of 2017had 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 on21.09.2019. As noticed earlier, the rules were ultimately struck downonly on 13.11.2019. At that time, the only order prevailing, which haddirected status quo with respect to tenure and age limits for membersand chairpersons of various tribunals, were the interim orders andclarifications in Kudrat Sandhu, dated 09.02.2018; 20.03.2018;16.07.2018 and 21.08.2018. These had stated that the maximum tenureof such members or chairpersons would be as stipulated in the parentenactments, before the coming into force of the Finance Act, 2017, orwere expressed to be for a maximum of 3 years, in the case ofchairpersons. 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 FinanceAct, 2017 had inserted Section 89A of the TM Act, (introduced by Section161 of the former Act) which states that the tenure of office and maximumage of retirement would be governed by the terms of the said FinanceAct and, consequently, the pre-existing tenure and age limits did notapply. Undoubtedly, the purport of Section 89A was to overbear orsupersede the pre-existing age and tenure limits (the existing tenure andage limits have been indicated in Section 86 of the TM Act). However,the Finance Act merely stipulates the potential maximum age limits andtenure limits. In the case of Chairpersons, the maximum age limitprescribed was seventy years (by virtue of second proviso to Section184 [1]). However, by virtue of the first proviso to Section 184 (1),members or chairpersons could be appointed “for such term asspecified in the rules made by the Central Government but notexceeding five years from the date on which he enters upon hisoffice”. Thus, the outer limit of the tenure was five years. As noticedearlier, the Central Government had fixed the tenure of chairperson ofthe board to be three years. By the time this rule was held unconstitutional,the tenure of the incumbent holding office of chairperson, of the boardended, on 21.09.2019. The final judgment in Rojer Mathew, could not 5 By S. No.12, Column 5 had fixed the tenure of Chairperson, Vice Chairman/JudicialMembers of the Board at 3 years and indicated that the outer limit for the tenure ofChairperson would be 67 years whereas that of the Vice Chairman and Members wouldbe 65 years.

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Ahave per se been applied to the facts of this case. The applicant’scontentions in this regard are of no avail; it is after the judgment inMadras Bar Association (supra) that the tenure has been mandatedto be five years. It is to be noticed that even the 2020 Rules did notprescribe 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 suchBa 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 andage limits were not only through the Schedule to the Finance Act, 2017,but also through its substantive provisions - Sections 156 to 182.[6] Theseprovisions introduced changes relating to tenure and age limits forCmembers and chairpersons of 19 tribunals (including the Income TaxAppellate Tribunal; Securities Appellate Tribunal, CompetitionCommission of India, CESTAT, Railway Claims Tribunal, CentralAdministrative Tribunal, Debt Recovery Tribunal, Debt RecoveriesAppellate Tribunals, the IPAB -i.e. the Board, in this case, etc.). Allthese provisions, much like Section 89A of the TM Act, alignedDParliamentary intention to legislate uniform tenure limits and maximumage for members and chairpersons. Therefore, Section 89A is only partof the entire legislative design. However, that has no bearing on thecircumstances of the present case.

24. The last contention which this court has to deal with is theEapplicant’s position that the Board cannot function without a judicialmember, and that at present, only the incumbent Chairperson is a judicialmember, and that if his tenure is not extended by a judicial order, theBoard would be unable to function. Subsidiary to this argument is that nomember can function as a Chairperson, as none of the existing membersFare judicial members, but are technical members.

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 benchof 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 SectionG84(3)(a) that a chairperson may, “in addition to discharging thefunctions of the Judicial Member or Technical Member of the Bench

6 In a part entitled PART XIV AMENDMENTS TO CERTAIN ACTS TO PROVIDE FORMERGER OF TRIBUNALS AND OTHER AUTHORITIES AND CONDITIONS OFHSERVICE OF CHAIRPERSONS, MEMBERS, ETC.

to which he is appointed, discharge the functions of the JudicialMember or, as the case may be, the Technical Member, of any otherBench.” Thus, in the absence of any member, the chairperson may, ifthe occasion so arises, act as technical or judicial member. Section 87enables a vice-chairperson, or as the case may be the senior-mostmember of the board to act as chairperson in the event of a vacancy tothat position, or in the event of the incumbent’s inability to function in thepost. Furthermore, significantly, Section 85 inter alia stipulates thequalifications for the post of chairperson or vice-chairperson. The relevantprovisions of this section (extracted below)[7 ]reveal that there is no barfor a technical member to be appointed as a regular chairperson, providedshe or he has for “at least two years, held the office of a Vice-Chairperson”. In fact, the incumbent five technical members all holdlegal qualifications[8] (three of them holding masters in law, including onewho holds a post-doctoral qualification). Four of these incumbent memberswere practising advocates in specialized fields of intellectual property(trademarks, and copyright) and one technical member (patents) hadexperience in the Patent Office. These members had practical legalexperience of ten to fifteen years. The fact that they were appointed as 7 85. Qualifications for appointment as Chairperson, Vice-Chairperson, or otherMembers.

(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 TechnicalMember; or (b) has been a Member of the Indian Legal Service and has held a post in Grade I of thatService 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 ofthat 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 underthe Trade and Merchandise Marks Act, 1958 (43 of 1958), or both, and has held a postnot 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 intrade mark law.

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

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Atechnical members cannot obfuscate the fact that they are legally trainedand qualified. Therefore, the argument that the technical members, intheir position at the board as of now, cannot function without achairperson, is unsustainable.

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

Ankit Gyan

Application dismissed.

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