On April 04, 2021, the Government of India through the Ministry of Law and Justice published The Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021 (hereinafter referred to as the “Ordinance”) which came into force on the date of publication. The Ordinance was promulgated by the President of India in exercise of the powers conferred to him under Article 123 of the Constitution of India, since the Tribunal Reforms (Rationalization and Conditions of Service) Bill, 2021, which was introduced in Parliament on February 13, 2021, but could not be taken up for passing in the House of the People. 

While, the Ordinance makes several amendments to the following and certain other Acts, the key effects of such amendments to all Acts that govern intellectual property rights are as under:

  • The Copyrights Act, 1957
    • All reference to the Intellectual Property Appellate Board (“IPAB”) in the Act has been omitted. Therefore, the IPAB ceases to have any jurisdiction, power or authority under the Act.
    • Any and all disputes and/or proceedings under the Act which in the past lay before the IPAB will instead lie at the Commercial Court set up under Section 3, or the Commercial Division of the High Court set up under Section 4 of the Commercial Courts Act, 2015, save and except the below, which shall lie at the High Court.
    • All rectification proceedings under Section 50 of the Act shall lie at the High Court.
    • All appeals under Section 72 of the Act from the orders of the Registrar of Copyright shall lie before the Single Judge of the High Court and must be instituted within three months from the date of the order. Provided that, if the Single judge thinks fit, he/she may refer such appeal to a Bench of the same High Court. However, where an appeal is heard by the Single Judge, a further appeal will lie to the Bench and must be instituted within three months from the order of the Single Judge. In computing such time limit, the time to obtain a certified copy shall be excluded.
    • All proceedings pending before the IPAB shall stand transferred to the Commercial Court or High Court, as the case may be. 
  • The Patents Act, 1970
    • All reference to the IPAB in the Act has been omitted. Therefore, the IPAB ceases to have any jurisdiction, power or authority under the Act.
    • Revocation petitions under Section 64 of the Act shall only be available as a counter claim before the High Court in a suit for infringement of the patent.
    • Rectification proceedings under Section 71 of the Act shall lie before the High Court. o All appeals under Section 117A of the Act shall lie at the High Court instead of at the IPAB.
    • All proceedings pending before the IPAB shall stand transferred to the High Court.
  • The Trademarks Act, 1999
    • All reference to the IPAB in the Act has been omitted. Therefore, the IPAB ceases to have any jurisdiction, power or authority under the Act.
    • Any proceedings for cancellation of a mark on the ground of nonuse under Section 47 of the Act shall now lie at the Registrar or the High Court only.
    • Any proceedings for rectification of a mark under Section 57 of the Act shall now lie at the Registrar or the High Court only. 
    • All appeals under Section 91 of the Act shall lie at the High Court instead of at the IPAB. o A suit for infringement of trademark shall be stayed under Section 124 of the Act if a defendant pleads invalidity of the mark or raises a defense under Section 30(2)(e) of the Act and the plaintiff pleads invalidity of the defendant’s mark, if rectification proceedings are pending before the Registrar or the High Court in respect of such mark, prior to institution of suit. Provided that, where rectification proceedings are not pending, and the Court is satisfied prima facie that such plea of invalidity of the mark is tenable, then the Court shall raise an issue regarding the same, and adjourn the case for three months, in order for the party concerned to apply to the High Court for rectification of such mark, and provided further that, where such rectification has been instituted within three months, then the Court may allow the trial of the suit to be stayed until the final disposal of the rectification proceedings.
    • All proceedings pending before the IPAB shall stand transferred to the High Court.
  • The Geographical Indication of Goods (Registration and Protection) Act, 1999 
    • All reference to the IPAB in the Act has been omitted. Therefore, the IPAB ceases to have any jurisdiction, power or authority under the Act.
    • Any rectification proceedings under Section 27 of the Act shall lie before the Registrar or the High Court only.
    • All appeals under Section 31 of the Act shall lie at the High Court instead of at the IPAB.
    • A suit for infringement of geographical indication shall be stayed under Section 57 of the Act if a defendant pleads invalidity of the registration of the geographical indication, if rectification proceedings are pending before the Registrar or the High Court in respect of such mark, prior to institution of suit. Provided that, where rectification proceedings are not pending, and the Court is satisfied prima facie that such plea of invalidity of the mark is tenable, then the Court shall raise an issue regarding the same, and adjourn the case for three months, in order for the party concerned to apply to the High Court for rectification of such registration of geographical indication, and provided further that, where such rectification has been instituted within the period of three months, then the Court may allow the trial of the suit to be stayed until the final disposal of the rectification proceedings. o All proceedings pending before the IPAB shall stand transferred to the High Court.
  • The Protection of Plant Varieties and Farmers Rights’ Act, 2001
    • All reference to the Plant Varieties Protection Appellate Tribunals (PVPAT) in the Act has been omitted. Therefore, the PVPAT ceases to have any jurisdiction, power or authority under the Act.
    • All appeals under Section 56 of the Act shall lie at the High Court instead of at the PVPAT.
    • All proceedings pending before the PVPAT shall stand transferred to the High Court.