Alert 390 - India – procedural guidelines aim to facilitate appeals from administrative decisions


India’s Intellectual Property Appellate Board (IPAB) has recently issued procedural guidelines that aim to streamline the appeal process and reduce the backlog of cases. The IPAB was established to hear appeals from administrative decisions, and rectification applications, under the Trade Marks Act, Patents Act and Geographical Indications of Goods (Registration and Protection) Acts.

Background

The IPAB, a specialist tribunal, was established in 2003 to deal with the considerable backlog of IP administrative appeals and rectification actions that had built up. Despite the IPAB’s establishment, however, the backlog has continued to grow. The procedural guidelines have been issued in an attempt to improve the situation.

Summary of Guidelines

  • Pleadings must be brief, not argumentative, and not repetitive: legal provisions and extracts from decisions should not be included. Pleadings must be verified by the party itself, not by counsel.
  • No change of representation shall be accepted without the consent of the earlier counsel.
  • Counsel shall ensure that the paper book containing pleadings is numbered before serving on the other side: the paper book filed in the Registry and the paper books of counsel on both sides must be identically paginated.
  • Where the respondent resides/carries on business outside India, it must have an address for service inIndia.
  • The Rules will be amended to remove ambiguity in relation to the time period for filing counter statements (responses) in appeals. Members of the Bar are requested to cooperate in this regard and be ready to argue the appeal after service of the notice of appeal.
  • The Applicant’s evidence shall be numbered Exhibit A1, A2 etc, the Respondent’s Exhibit R1, R2 etc. If any additional evidence is filed along with any miscellaneous petition, that evidence will be numbered continuously with reference to the documents originally filed e.g. if the Applicant’s evidence originally filed was numbered Ex. A1 to A20, the numbering of the additional evidence will start at Ex. A21. The same method will be followed by the Respondent.

An extension of time for filing a counter statement/reply to a rectification petition must not be sought on vague grounds. The two month period provided by law is considered to be sufficient, and unless there is a compelling reason, an extension should not be sought.

Comment

Although the guidelines do not, for the most part, add anything to basic rules of pleading, they do serve as a reminder, to both parties and their counsel, that the system will not improve unless all stakeholders co-operate. As the guidelines address practical issues confronting the IPAB, they are clearly a step in the right direction towards expediting the disposal of appeals and reducing the current backlog.

For further information, please contact local Indian law firm, Ranjan Narula Associates, an associated firm of Rouse: info@indiaiprights.com.