TRADEMARK ASSIGNMENT AND LICENSING

Introduction

The Trademarks Act of 1999 aims to protect the rights of trademark owners who invest time,
effort, and resources into building their brand's reputation. The Act prevents consumer
deception by prohibiting the use of confusingly similar marks that may mislead consumers
into purchasing inferior products. Additionally, it allows trademark owners to assign or
license their trademarks, with or without transferring the associated goodwill. A trademark
can be assigned or licensed even without registration.

Trademark Assignment

Definition of Trademark Assignment

Trademark assignment refers to the transfer of ownership rights in a trademark from the
original owner (assignor) to another party (assignee). The Trademarks Act defines
assignment as a written transfer of ownership under Section 2(b).

Who Has the Authority to Assign a Trademark?

According to Section 37 of the Act, only the registered proprietor of a trademark can assign it
to another person. The assignment must be made by the trademark’s registered owner in the
Trademark Register.

Documents Required for Trademark Assignment

To register an assignment, the following documents are needed:

1. Agreement for trademark assignment

2. Certificate of trademark registration
3. No Objection Certificate (NOC) from the assignor
4. Identity proof of the assignor and assignee
5. Trademark Licensing

Definition of Trademark Licensing

Trademark licensing is when the trademark owner grants permission to a third party to use
their trademark in exchange for a royalty fee. The licensee is allowed to use the trademark for
specific products or services.

Who Has the Authority to Grant a Trademark License?

Only the registered trademark owner has the authority to grant a license. Both registered and
unregistered trademarks can be assigned or licensed.

Procedure to Register a Trademark License

The following steps are involved in registering a trademark license:

1. The agreement must be in writing.

2. Both the trademark owner and the licensee must jointly apply to the Registrar.
3. Form TM-U must be used for registration.
4. The trademark owner must submit an affidavit detailing the terms of the license,
including the relationship between the parties, the duration, and the goods/services for
which the license is granted.
 5. Difference Between Trademark Licensing and Trademark Assignment

Trademark Assignment involves transferring full ownership of a trademark from the assignor
to the assignee. In contrast, trademark licensing allows the trademark owner to retain
ownership while granting specific rights to a third party for limited use of the trademark.

4. Registered Users and Related Provisions

Section 48 - Registered Users

This section allows a person, other than the registered proprietor, to be recognized as a
registered user of a trademark for specific goods or services, subject to the conditions of
Section 49.

Section 49 - Registration of Registered Users

To register as a user, both the registered proprietor and the proposed user must apply jointly.
The application must include a written agreement and an affidavit detailing the relationship
and terms of use.

Section 50 - Power of the Registrar

The Registrar has the authority to modify, revoke, or cancel the registration of a registered
user based on violations of the agreement or failure to comply with quality standards.

Section 51 - Registrar’s Request for Agreement Information

The Registrar may request information about agreements related to registered users. Failure
to confirm the validity of the agreement may result in the cancellation of registration.

Rights of Registered Users and Infringement Action

Section 52 - Right of Registered User to File a Lawsuit Against Infringement

A registered user has the right to sue for trademark infringement in their own name, naming
the registered proprietor as a defendant.

Section 53 - Limitations on Permitted Users

A permitted user (someone authorized under a license) cannot take legal action for trademark
infringement.

Benefits of Trademark Assignment

Trademark assignment allows the original owner to profit from the brand’s value, provides
the assignee with ownership of a well-established brand, and helps both parties expand their
businesses. It also provides legal clarity regarding rights and obligations through the
assignment agreement.

PASSING OFF
What is Passing-off in Trademarks?
Passing-off in IPR is not a new concept. The law of passing off is a civil wrong that dates
back to a time when there was no codified legislation protecting trademark from malicious
infringers. However, the term “passing off of trademarks” is now commonly used in
reference to unregistered trademarks. Passing off occurs when a person sells his goods or
services as those of another in order to profit from the goodwill and reputation of that
trademark in the market. In layman’s words, the law of passing off implies passing off your
own product under the name of an already existing and reputable trademark in order to
deceive consumers and profit from the trademark’s goodwill. The famous case of Perry v.
Truefitt established the principle of passing off, which states, “No one has the right to portray
his commodities as the goods of someone else”.
For example, if a person begins selling burgers under the name ‘MAC-E,’ this may give
consumers the impression that this place is an extension of the sequel of the famous burger
chain called ‘MAC-D,’ and this confusion in the minds of consumers, as well as the intention
of the person selling burgers to create such confusion, results in passing off of trademark.

Passing off v. Infringement

As was indicated before, it is frequently observed that the law of passing off is only
applicable to unregistered trademarks, and that the term “infringement” is used to refer to the
unauthorized use of registered trademarks. The law of passing off is based on civil law, and
no criminal proceedings can be brought in the case of passing off, with the remedies being in
the form of damages. However, in cases of trademark infringement, criminal action might be
taken against the infringer. The ‘intention’ is another point of differentiation between passing
off and infringement. It is possible to infringe on a trademark without being aware of what is
being done, which means that there need not be any malicious intent behind the action. On
the contrary, the wrong of passing off is only committed when there is intent to ride on the
reputation of another person’s trademark.

In the case of Kaviraj Pandit Durga Das Sharma v. Navaratna Pharmaceutical, the
Supreme Court highlighted the fact that a passing off is a form of common law remedy,
whereas infringement has traditionally been a statutory form of remedy.
Essential Ingredients of Passing Off
Similar to any other civil wrong, the tort of passing off requires the presence of certain
elements in order to establish liability for the infringement of a trademark. When there is
misrepresentation, and it is harmful to the existence of the plaintiff’s goodwill, when it is
made by a trader in the course of trade, when it is injurious to the business of another trader,
and when it causes actual damage to the business or goodwill of the trader against whom the
action is brought, a passing off action can arise.

However, as a result of the case Reckitt & Colman Products Ltd. v. Borden Inc., the number
of essential conditions for the passing off action was lowered to three. These essential
elements are also called as the ‘Classic Trinity’, and are as follows:
1. Goodwill in the market
It is essential to have goodwill in the market in order to bring a passing action, and the
plaintiff has the burden of proving that either he or his trademark has an unmatched goodwill
in the market. He is required to provide evidence that consumers link only his goods or
services with the trademark in question.

In the case of CIT v. B.C. Srinivas Seti, it was determined that goodwill is influenced by
everything that is associated with the business. This includes the personality of the owners of
the business, the nature and character of the business, the name and reputation of the
business, its location, its influence on the modern market, and the current socioeconomic
psychology.
2. Misrepresentation
The third fundamental component is misrepresentation, and the plaintiff has the burden of
proving that the defendant has in fact committed the act of misrepresenting his own items or
services as belonging to the plaintiff. Misrepresentation is done with the intention of
misleading the general public, which goes against the very point of trademark law.

In the case of Khemraj v. Garg, the defendants had duplicated the plaintiff’s panchang’s
appearance, layout, design, colour scheme, etc., as well as the names “manavpanchang, mani
ram panchang,” and “shri vallabh Mani Ram panchang.” The court determined that the
defendant’s product is identical to the plaintiff’s, and an interim injunction was issued.
3. Damage to the goodwill
The final element that must be established is that the plaintiff’s goodwill has been damaged
as a result of the defendant’s passing off. It means that either consumer are purchasing the
counterfeit items believing they are the plaintiff’s or the counterfeit products are of such poor
quality that consumers discontinue purchasing the plaintiff’s genuine products.

Conclusion
Section 27 of the Indian Trademarks Act, 1999 states that although the owners of an
unregistered mark cannot file a suit for the infringement of their marks, this does not limit
their right to protect their trademark against those who use it to gain an unfair advantage, and
an action for passing off can be brought. In conclusion, the action of passing off is mostly for
infringement of unregistered marks, but it is also relevant in cases of registered trademarks
along with the infringement suit if the infringer attempts to purposefully confuse consumers
by passing off another’s products as his own.

TRADEMARK INFRINGMENT
What is Trademark Infringement?
Section 28 of Indian Trademark Act, 1999 discusses the rights that are vested in the
registered proprietor of a trademark. It also grants the registered proprietor an exclusive right
to use the trademark in relation to the goods and services in respect of which the trademark is
registered, and section 29 of the act states that trademark infringement occurs when any of
these rights are violated. To put it simply, trademark infringement takes place when a person
other than the registered proprietor uses the exact similar or deceptively similar trademark to
the registered trademark for similar goods or services without the permission of the registered
proprietor in order to gain unfair advantages.

Essentials Element of Infringement

1. Making minute alterations – Taking any key characteristic of a trademark or taking the
entire mark and then making a few variations or additions would be considered trademark
infringement.
2. Use in relation with similar goods or services– The infringing mark must be utilized in
relation with the similar products or services as that of the registered mark.
3. Use in Printed form– The infringing mark has to be a printed version of the mark or a
typical depiction of the mark, and it has to be on the advertisement, the invoice, or the bill.
Any oral use of a registered trademark does not constitute trademark infringement.
Let’s use a landmark trademark infringement case, Starbucks Corporation v. Sardarbuksh
Coffee & Co., to illustrate each of the aforementioned instances of trademark infringement.
The plaintiff in this case was ‘Starbucks Coffee,’ a well-known coffee brand with outlets in
practically every country, and the defendant was ‘Sardarbuksh Coffee,’ another coffee place
with various outlets in Delhi.
Satisfying the first condition, the defendants in this case clearly attempted to confuse the
public by using a phonetically similar name and a similar logo with just reversing the
Starbucks logo’s color scheme. (Image given below)

Secondly, the defendants were utilising the trademark in connection with identical goods and
services, in this case selling coffee and associated products. Finally, the infringing mark has
been used in printed form and in advertisements, satisfying all three requirements of
trademark infringement.

Types of Trademark Infringement

The act of trademark infringement is divided into two categories: direct infringement and
indirect infringement.
Direct Infringement
The direct infringement has been discussed under section 29 of the Act. The provision lays
down a few constituent elements have to be met for direct infringement to occur, which are
mentioned below:

1. Use by an Unauthorized Person – This indicates that trademark infringement occurs

when a registered trademark is used by an unauthorized person who is neither the owner
nor the licensee of the mark. If the registered trademark is used with the owner’s
permission, this does not constitute trademark infringement.
For instance, if you open a cosmetics and makeup store with the name “Nykaa” without
obtaining a license or authorization from the owners of the mark “Nykaa,” this constitutes
trademark infringement since it is an unauthorized use of the mark.

2. Identical or Deceptively Similar Mark– A mark is regarded identical or deceptively

similar to an already existing mark only if there is a possibility or likelihood of confusion
among the public.
In the recent case of In Mondelez Indian Foods Pvt. Ltd v. and Neeraj Food Products (also
known as Gems v. James Bond), the Delhi High Court granted a permanent and mandatory
injunction against the Defendant for retailing “James Bond,” a chocolate product that showed
a deceptive similarity to Cadbury’s trademark “Gems.”
3. Registration- It is a well- known fact that the registration of a trademark is India is not
mandatory but the protection against the trademark infringement is only extended to the
registered trademarks and for the unregistered trademarks the common law principle of
passing off is applied.
4. Similar class of goods/services- Before submitting a trademark application, the class of
products or services offered under the trademark is selected from a total of 45 classes
under the NICE classification system, and registration is done exclusively under that class
or classes. Therefore, in order to demonstrate trademark infringement, the infringing
mark’s class of goods or services must be identical to that of the infringed mark.
In the Indian market, for instance, the trademark ‘Red Label’ exists for both tea and alcoholic
beverages, and the trademark ‘BlackBerrys’ exists for both men’s formal clothing and mobile
phones, as the marks belong to separate categories of goods and services.

Indirect Infringement
There is no specific law defining or discussing the elements of an indirect infringement, but
the absence of such a provision does not suggest that all parties other than the principal
infringer cannot be held accountable for the infringement. Indirect infringement occurs when
a third party aids or encourages the principal infringer to infringe the registered trademark. In
this instance, the individual who facilitates infringing activity becomes the indirect infringer
and is liable for the indirect infringement. The indirect infringement is further classified into
two types-

1. Vicarious Liability- Vicarious Liability is when an individual is held accountable for the
wrongful act of others. It is commonly employed in the context of employer-employee
relationships and is also specified in section 114 of the Indian Trademarks Act, 1999. It
states that if a firm or company commits an offence, the entire firm will be held liable,
with the exception to the individuals who committed the offence in good faith and without
knowledge.
A person is vicariously liable for an offence in the following circumstances:

 He has the direct control over the activities of the direct infringer.
 He is aware of the infringement and nonetheless contributes to it.
 Such infringement has benefitted him monetarily.
2. Contributory Infringement- A person is responsible for contributory violation under the
following conditions:
 He is aware of the trademark infringement in question.
 He significantly contributes to direct infringement.
 He induces the major infringer to violate the trademark.
Remedies for trademark infringement
Civil and criminal remedies are the available remedies for trademark infringement, and the
plaintiff has the option of initiating either or both of these actions against the defendants. For
the purpose of infringement of an unregistered trademark the common law remedy of
passing- off can be invoked.

Civil Remedies
The civil remedies available in case of trademark infringement are as mentioned:

1. Damages
The damages in the form of compensation are provided to the plaintiff or the owner of the
registered trademark by the infringer.

2. Accounts of profit
Any profit gained by the infringer while using the trademark of another registered owner, all
the profit or certain amount of monetarily compensation is delivered to the owner of
Trademark.

3. Destruction of goods
The court may issue and order of destruction or eradication of all the goods or products
manufactured using the infringed mark.

4. Injunction
Injunction is an action that prohibits unofficial or unauthorized use of TM. The court grants
protection to the trademark owner by preventing the infringer from further using the infringed
mark.

The injunction order can be of four types:

 Anton Piller Order- the Anton Piller Injunction order is an ex-parte order which is issued
to inspect the premises of the defendant without giving any prior notice.
 Mareva Injunction- when the court prohibits defendants from using their assets within the
court’s jurisdiction until the conclusion of the trial.
 Interlocutory Injunction or temporary injunction- entails the prohibition of an action by a
party to a lawsuit until the case is resolved.
 Permanent or perpetual injunction- It is a court order requiring an individual or company
to permanently refrain from engaging in specific activities.
5. Cost of proceedings-
The court can order the defendant to bear the costs of proceedings of the plaintiff.

Criminal Remedies
The criminal remedies available in case of trademark infringement are as follows:

 With a prison term that should not be less than six months and can be extended to three
years;
 With a fine that should not be less than 50,000 rupees and can be extended to two lakh
rupees.
Conclusion
A trademark carries huge weight and is valued because it has a company’s reputation
associated with it. Unfortunately, such success & popularity amongst the consumer base can
have negative consequences too, trademark infringement being one of them. Deceptively
similar marks can be used by either businesses to divert consumer traffic to their outlets or by
counterfeiters to sell fake products as the real deal. This can become a problem since the
average customer may get fooled and the original company may get blamed. In order to curb
this menace, it is important to understand the trademark infringement, the way it happens, its
nature to transcend borders and how one can take steps to curb trademark infringement.
INTELLECTUAL PROPERTY APPELLATE BOARD

INTRODUCTION

Recently, these rights were protected. Trademarks, designs, and patents are all examples of
industrial property. Unfair competition is intended to be eliminated by the Paris Convention,
which regulates agreements for the protection of industrial property. Industrial property is
intellectual property since it contains copyrights, geographic markers, designs for layouts,
and confidential information.

Intellectual property rights in India

Intellectual property restrictions limit how creatively people may use their ideas. These
privileges are recent. Trademarks, designs, and patents are examples of industrial property.
Eliminating unfair competition is the aim of the Paris Convention. When combined with
copyrights, geographical markings, design blueprints, and sensitive information, industrial
property is transformed into intellectual property.

Intellectual property rights have the authority to enforce international law thanks to the Trade
Related Aspects of Intellectual Property Rights (TRIPS) Agreement of the WTO. IP rights
are described under TRIPS as: First, copyrights

Copyright is protected by performers, phonogram producers, and broadcasting companies.

copyright for painters, the copyright in their work that is protected by the rights of
performers, phonogram manufacturers, and broadcasting companies. the copyright in works
owned by painters, musicians, sculptors, photographers, and authors. the legal status of
software, whether it is in source code or object code.

1. Dealers’ ownership of trademarks.

2. The manufacturer’s and producer’s right to the location of the production and sale of
such items.
3. Designers deserve praise for their distinctive, eye-catching creations.
4. The right to a patent for an invention belongs to the inventor. Farmers and plant
breeders also have this right.
5. biological diversity is entitled.
6. Computer engineers’ rights to develop integrated circuit layouts.
7. The businessperson’s right to protect their exclusive information on technology and
management.

In situations of suspected Policy breaches by students, employees, or administrators, the

Appellate Board hears appeals.

BACKGROUND

In 2003, IPAB was established.

It concentrated on copyright, patents, trademarks, and geographic indicators.

Since the Novartis patent case in 2007, the IPAB is authorized by the Patents Act to hear and
evaluate Patent Controller appeals. The Patents Act has faced challenges from the Indian
High Court, according to IPAB.
By virtue of the Tribunal Reforms (Rationalization and Condition Service) Ordinance 2021,
IPAB is eliminated.

The model patent legislation that complies with TRIPS comes from India. For instance,
evergreening restrictions and necessary permissions.

India was prohibited from developing powerful appeals process for patent law due to the
IPAB’s failure.

What are the powers of Intellectual Appellate board?

Instances where an application is rejected because it does not satisfy the Act’s requirements,
divisional application orders, application dating orders, anticipation decisions, instances of
potential infringement, orders regarding applicant substitution, cancellation of patents in the
public interest, and clerical errors can all be appealed to the IPAB.

However, decisions made by the Indian Central Government regarding inventions related to
defence purposes, such as orders of secrecy regarding such inventions, revocation of a patent
if it conflicts with the public interest, or decisions related to atomic energy, are not subject to
appeal to the IPAB. Also, not susceptible to review is the Controller’s order extending the
deadline under any provision of the Patent Act of 1970.

Organization of an IPAB Bench: Each IPAB Bench consists of a Judicial Member and a
Technical Member. The prerequisites for appointment as a technical member of the IPAB are
specified in both the Trade Marks Act and the Patents Act.

What is the composition of Appellate Board?

The Trademarks Act grants the Appellate Board a chairman, vice-chairman, technical, and
judicial members. Central government decides. Benches use it. Boards tell benches to
partition subjects. One judge/technician. Central Government staff can help the board.

CHAIRMAN

Two-year judges’ Vice-chairmen preside. Five years or 65. He decides benchability. No

bench is his. He can swap members across benches. Chairpersons hear member grievances.
Chairman’s options. He picks. Others decide. First case hearer and members addressed.
Chairman oversees Central government-appointed staff.

Chairman informs and hears bench transfer requests. Chairman can swap benches.

This law makes the vice-chairman chairman. If the vice-chairman is missing, the senior
member leads. till the chairman returns.

VICE-CHAIRMAN

Vice-chairmen must be two-year technical or judicial or five-year Grade I Indian legal

service members. Five years or 65. He succeeds if the chairman dies or resigns.

Other members

Judges, specialists. The Indian legal service requires three years in a Grade I post or 10 years
in a civil judicial office for judicial members.
Before appointing the chairman, vice-chairman, judicial, and technical members, the
president contacts the Indian top justice. Terms, pensions, allowances, and salaries are set.
Vice-chairman, technical, and judicial government employees retired.

What is the process of removal or resignation of the members?

By giving notice to the President, members of the appellate board or bench may resign. Three
months after sending the notice, the member is deemed to have resigned from their position.
The member may quit the office before the expiration of the designated tenure, with the
permission of the President or if a fresh candidate is chosen to occupy the seat. None of them
may be dismissed before to the expiration of their mandates unless the President gives a
directive based on conduct that has been found to be improper or incapacity that has been
determined by a Supreme Court judge. Before that, the member must be made aware of the
charges against him and given an opportunity to respond fairly.

What is the role of Intellectual Property Appellate Board?

The Intellectual Property Appellate Board was formed on September 5, 2003, to hear and
consider appeals against the registrar’s decisions under the Indian Geographical Indication of
Goods Act, 1999, and the Indian Trademarks Act, 1999.

Correct applications and quick appeals are given priority by IPAB. The IPAB also has circuit
benches in Mumbai, Delhi, Kolkata, and Ahmedabad in addition to its headquarters in
Chennai.

In its Statement of Objects and Reasons, the Trademarks Act of 1999 (47 of 1999)
recommended the creation of an Appellate Board to promptly consider High Court appeals
and rectification applications. The IPAB was established by the Central Government on
September 15, 2003, according to the Official Gazette.

Geographical indicators relating to commodities were recognized and given protection by the
1999 Geographical Indicators of Commodities (Registration and Protection) Act. The IPAB
appeals process under the Trademarks Act was exclusive to the Act.

Our patent system became TRIPS-compliant in 2002 thanks to the Patents (Amendment) Act.
This Act gave the IPAB the power to consider appeals of controller orders or judgments,
cases involving the cancellation of patents (except than those involving counterclaims for
patent infringement), and cases involving the correction of registrations. S. 117-G of this Act
assigned the IPAB jurisdiction over all High Court proceedings.

Its operations are governed by the 2003 Intellectual Property Appellate Board (Procedure)
Rules. The Board’s judgment is upheld.

Decisions made by the Controller of Patents are subject to review by the IPAB. Legally
speaking, the IPAB is unable to decide infringement disputes. IPAB must assume control of
High Court cases relating to Controller decisions or orders under IPA s. 117G.

What is the jurisdiction related to Intellectual Appellant Board?

The IPAB must receive appeals from the Controller’s decision within three months of the
date of the judgment, order, or directive, or within an extended period granted by the IPAB,
together with the relevant fees.
A Condonation of Delay (COD) petition must be submitted in order to file the appeal with an
extension. A COD must be filed with a proper explanation for the delay and the necessary
governmental fees.

The IPAB accepts appeals of the following decisions issued by the Controller or the Central
Government of India:

 Any choices relating inventors’ names

 Any directions given to co-patent owners or decisions pertaining to the Patent of
Addition
 Any orders pertaining to divisional applications
 any instructions relating to the date of the application
 Application denied because it didn’t follow any Act requirements
 Any decisions that involve the possibility of judgements, rulings, or instances of
potential infringement.
 in relation to fixing a clerical error.
 Any decisions regarding the mandatory licensing of a patent.
 all rulings addressing the cancellation of a patent for non-use.
 various options, even the replacement of programs.
 Any decision concerning the cancellation or revision of a patent.
 Any decisions relating to application and specification changes.
 Any decisions addressing the restoration of patents that have expired.
 Any options, even the revocation of patents.
 Regarding the public interest’s revocation of patents.
 Any patent assignment registration

Exclusive Jurisdiction: Except for counterclaims in infringement cases, the Appellate Board
has exclusive jurisdiction over all appeals from any decisions or rulings rendered by the
Controller as well as any procedures involving the cancellation of patents and the correction
of registrations. The IPAB has the power to reopen any matter where an appeal was
previously filed. It is still legal for the High Courts to consider cases involving patent
infringement.

The only body with the power to employ such powers and decide on the legal actions that
result from an appeal against a Controller order or judgment is the IPAB.

The Indian High Court should rule on a counterclaim in an infringement action.

This page’s content aims to give readers a broad overview of the subject. You should seek
professional counsel given your unique situation.

What are the sections 83,84,85,88,91,92,94 and 117A of Indian Patent Act 1970 talks
about?

 Section 83 says that to exercise its jurisdiction, powers, and authority under this Act,
the Central Government must form the Intellectual Property Appellate Board in the
Official Gazette.
 Section 84 of the Indian Patent Act addresses the granting of Compulsory Licenses.
 Section 85 says that if a copyright does not work, the manager can decide to take it
away.
 Section 88 says that the Controller can give out permits that must be given.
  Sections 91, 92, and 94: When the controller approves patent licensing, when the
controller approves the registration of a patent after getting a notice from the central
government, and when the controller decides to end the license over the objection of
another person while taking that person’s interests into account.
 Section 117A (3) says that every IPAB appeal must include a copy of the decision,
order, or direction being appealed, as well as any costs that may be needed.

Music Broadcast Ltd. v Tips Industries Ltd. & Ors. (2020)

Case facts

Music Broadcast Ltd. filed ten applications under Section 31(D) of the Copyright Act, 1957
and Rule 31 of the Copyright Rules 2013 for statutory license and to set the rate of royalties
to be paid to Copyright owners for radio broadcasts of sound recordings in 2020. The IPAB
solicited applicant feedback on September 22, 2020.

IPRS submitted a notice application on September 17. The IPRS assumed radio transmissions
have two royalty repercussions. IPRS exploitation and music industry royalties are the two.
Sony Music India, TIPs Industries Ltd., and other music companies allegedly surrendered
their rights to IPRS through deeds.

The IPRS also suggested remuneration for lyrics, composition, and radio sound recording.
Reapplying September 23.

Copyright board license expiration applications were submitted. The applicant worried about
the ramifications if a status quo order was not secured by September 30, 2020, the license
expiry date.

Issue

The issue was

Should sound recordings have different royalties?

When the statutory license expires, will music businesses force applicants to sign?

Judgment

IPAB chairman Justice Manmohan Singh, N Surya Senthki, and S P Chock lingam presided.
IPRS’s assignee—lyricists, music composers, and publishers—can claim revenue separately,
the Bench ruled. 2012 Copyrights Act, 1957 modification affected verdict. The ruling
required radio broadcasters to pay copyright owners of literary and musical works under
sound recordings a separate fee from 2021.

After the license expires, radio broadcasters’ arrangements with music firms would remain
unaltered, the Court said. The IPAB also upheld the 8 August 2010 judgement on radio
broadcast royalties.

What are the reasons for the failure of Intellectual Property Appellant Board?

 First, the IPAB was unable to perform its adjudicative powers due to administrative
issues. There were several issues that need resolving in court. Vacancies before the
 High Courts in Delhi and Chennai, for example, have been sought to be filled in
connection with a case that questions the legitimacy of the IPAB.
 There are also applications to the Supreme Court for an extension of the chairperson’s
term.
 The second issue is a lack of employees. For instance, it ran without a chairperson for
more than two years. Additionally, there was a further delay in the technical
member’s patent nomination.
 The IPAB lacks institutional and judicial independence, third. This issue has been
brought up in public by former chairmen.
 The fourth is a lack of power. For instance, without a dependable backup, the leading
authority on innovation and technology protection must continue to function during
power outages.
 The fifth is inefficiency. 20 patent disputes, for instance, were settled per year.
Furthermore, roughly 70% of the filed patent litigation were at one time either
pending or inactive.
 Finally, IPAB’s demise was influenced by the government’s disregard for it. For
instance, rather than a parliamentary act, an ordinance was utilized to pass the bulk of
significant modifications to the Patents Act since 1970.
 Unjustified patent awards made by the Patent Office may be rectified through an
appellate process if they were made accidentally or carelessly. An effective appeals
mechanism for patent law is crucial for the innovation ecosystem.

What is the recent amendment to Intellectual Property Appellate Board?

Under the Tribunal Reforms Act, 2021, India’s Intellectual Property Appellate Board (IPAB)
was recently abolished and its responsibilities were given to the country’s Commercial Courts
and High Courts. Therefore, the Delhi High Court released a public notice on February 24,
2022, that included the division’s finished rules of procedure.

CONCLUSION

In India, a body called the Intellectual Property Appellate Board (IPAB) was created to
handle disputes involving intellectual property rights. This is the overarching conclusion I
have reached after conducting my investigation.

Patents, trademarks, geographical indications, and copyrights are only a few of the forms of
intellectual property rights that fall within the purview of the Intellectual Property and
Appellate Board (IPAB). The Controller of Patents, the Registrar of Geographical
Indications, the Registrar of Trademarks, among other authorities, had the power to hear
appeals of rulings.

Over the course of its existence, the Indian Patent Appeal Board (IPAB) has rendered several
decisions and opinions relating to various areas of Indian intellectual property law. These
rulings covered a wide range of subjects, including the legal protection given to geographic
markers, the viability of patents, trademark infringement, copyright infringement, and many
more.

But it is important to remember that India no longer participates in the IPAB. Several
tribunals, notably the Intellectual Property Appellate Board (IPAB), were abolished as a
result of the Tribunals Reforms (Rationalization and Conditions of Service) Act, 2021, which
the Indian government enacted in 2021. Since that time, a variety of other organizations,
including high courts and commercial courts, have inherited the IPAB’s jurisdiction and
duties.

CONFLICT WITH DOMAIN NAME

https://blog.ipleaders.in/trademark-issues-related-to-internet-domain-names/

UNCONVENTIONAL TRADEMARK
https://www.scconline.com/blog/post/2023/03/18/the-case-of-unconventional-trade-
marks-does-the-trade-marks-act-1999-need-reform/