Trademark Tribunal — IPAB Abolition, Civil Court Jurisdiction

For two decades, the appellate and rectification jurisdiction under the Trade Marks Act, 1999 belonged to a specialised tribunal — the Intellectual Property Appellate Board, established in 2003. The IPAB heard appeals against the Registrar's decisions, decided rectification petitions under Sections 47 and 57, and acted as the constitutional substitute for the original High Court jurisdiction that had previously obtained. On 4 April 2021, the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 — later replaced by the Tribunals Reforms Act, 2021 — abolished the IPAB. The jurisdiction it exercised was transferred back to the High Courts. The change was sweeping. Every pending appeal, every pending rectification petition, every pending revocation matter migrated overnight to the High Court that had territorial jurisdiction. This chapter explains the post-2021 structure: who hears what, where, and on what statutory foundation.

The architecture of the new framework rests on three pillars. The first pillar is the original quasi-judicial jurisdiction of the Registrar in registration, opposition and allied matters — preserved unchanged through the 2021 reforms and detailed in the chapter on the Trade Marks Registry and Registrar. The second pillar is the original civil jurisdiction of the District Courts and High Courts in suits for infringement and passing off under Section 134 of the 1999 Act. The third pillar — the new pillar created by the 2021 reforms — is the appellate and rectification jurisdiction of the High Courts, replacing the IPAB. The three pillars together describe the entire forensic landscape of trade-mark litigation in India today.

The pre-2003 position — original High Court jurisdiction

Until the IPAB was constituted in 2003, the Trade and Merchandise Marks Act, 1958 (and the Trade Marks Act, 1999 from its commencement on 15 September 2003) gave appellate and rectification jurisdiction directly to the High Courts. A person aggrieved by an order of the Registrar could appeal to the High Court within whose territorial jurisdiction the appropriate office of the Trade Marks Registry was situated. A person aggrieved by an entry in the register could apply to the High Court for rectification. The High Courts therefore exercised the full range of supervisory and corrective jurisdiction under the 1958 Act and, briefly, under the 1999 Act.

The shortcomings of the High Court system were pragmatic rather than constitutional. The High Courts were burdened with general-jurisdiction work and could not give specialised attention to trade-mark, patent and copyright matters; the absence of technical members meant that complex factual questions were decided by judges with general training; the geographical distribution of cases was uneven, with the Delhi and Bombay High Courts shouldering a disproportionate share. The IPAB was created in response to these concerns.

The IPAB era — 2003 to 2021

The Intellectual Property Appellate Board was constituted under Sections 83 to 100 of the Trade Marks Act, 1999, with effect from 15 September 2003. Its jurisdiction extended to appeals against the Registrar's decisions under Section 91, and to rectification petitions under Sections 47 and 57. The IPAB was a specialised tribunal with a Chairman (a former or sitting Supreme Court Judge or a Chief Justice of a High Court), Vice-Chairmen, and Technical Members with expertise in trade-mark matters. Its principal bench was at Chennai, with circuit benches at Delhi, Mumbai, Kolkata and Ahmedabad — mirroring the geographical distribution of the Trade Marks Registry's branch offices.

The IPAB exercised exclusive jurisdiction over its assigned matters. Once the IPAB was constituted, the High Courts ceased to entertain appeals against the Registrar's decisions and ceased to entertain rectification petitions; those went to the IPAB. The High Courts retained their original civil jurisdiction in infringement and passing-off suits, and their writ jurisdiction in respect of the IPAB's orders. They lost the appellate and rectification jurisdiction altogether.

By 2021, the IPAB had become controversial. Vacancies in the Chairman and Member positions had become endemic; long periods of non-functioning meant that pending matters accumulated; and the constitutional jurisprudence on tribunal independence (the Supreme Court's decisions in L. Chandra Kumar v. Union of India (1997) 3 SCC 261, Madras Bar Association v. Union of India (2014) 10 SCC 1, and the subsequent series of Madras Bar Association cases) had identified structural defects in many specialised tribunals. The Government took the view that the IPAB and several other tribunals had outlived their utility. The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 was promulgated on 4 April 2021. The Tribunals Reforms Act, 2021 received Presidential assent on 13 August 2021 and came into force retrospectively from 4 April 2021.

The Tribunals Reforms Act, 2021 — abolition of the IPAB

The Tribunals Reforms Act, 2021 abolished nine tribunals, including the Intellectual Property Appellate Board. Section 12 of the 2021 Act amended the Trade Marks Act, 1999 to delete Sections 83 to 100 (the IPAB chapter) and to substitute references to the IPAB throughout the 1999 Act with references to the High Court. The effect was structural and immediate. The IPAB ceased to exist on 4 April 2021. All proceedings that were pending before the IPAB on that date were transferred to the High Court that had territorial jurisdiction over the matter.

The 2021 Act made consequential amendments to several intellectual-property statutes besides the 1999 Act — the Patents Act, 1970, the Copyright Act, 1957, the Geographical Indications of Goods (Registration and Protection) Act, 1999, the Plant Varieties and Farmers' Rights Act, 2001, and the Designs Act, 2000. The IPAB's jurisdiction in each of these statutes was transferred to the High Courts. The 2021 reform therefore re-established the original High Court structure that had obtained before 2003, with one important refinement: the High Courts have responded by constituting specialised intellectual-property divisions to handle the transferred work efficiently.

The Delhi High Court IPD — institutional response

The Delhi High Court, which receives the largest share of intellectual-property litigation in India, responded to the IPAB abolition by constituting the Intellectual Property Division (IPD) on 7 July 2021 and notifying the Delhi High Court Intellectual Property Rights Division Rules, 2022. The IPD is a specialised division that hears all original suits for infringement and passing off, all appeals against the Registrar's decisions, all rectification petitions, all writ petitions, and all other intellectual-property matters within the High Court's jurisdiction. The Bombay, Madras and Calcutta High Courts have followed broadly similar models, though with variations in the procedural rules.

The IPD model addresses the original concern that motivated the IPAB — the need for specialised attention to intellectual-property matters — while preserving the constitutional advantages of the High Court forum (the appeal as of right to a Division Bench, the writ jurisdiction, the availability of a Special Leave Petition to the Supreme Court). The combination is widely regarded as more constitutionally robust than the IPAB framework was.

Section 47 — removal from the register for non-use

Section 47 of the Trade Marks Act, 1999 provides for removal from the register of a registered trade mark on the ground of non-use. A registered trade mark may be taken off the register on the application of any person aggrieved if it can be shown that the trade mark was registered without any bona fide intention on the part of the applicant for registration to use the trade mark in relation to the goods or services in respect of which it is registered, and that there has been no bona fide use of the trade mark by him in relation to those goods or services up to a date three months before the date of the application; or that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer has elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being.

Section 47 is, in effect, the use-it-or-lose-it provision of the 1999 Act. It complements the renewal mechanism in Section 25 and the exclusive right of the registered proprietor under Section 28 by giving aggrieved third parties a route to attack registrations that have lain dormant on the register without bona fide commercial use. Pre-2021, an application under Section 47 was made to the IPAB. Post-2021, by virtue of the Tribunals Reforms Act, 2021 read with the substituted text of the 1999 Act, the application is made to the High Court that has territorial jurisdiction.

The substantive law on Section 47 is unchanged by the forum change. The applicant must establish either the absence of bona fide intention to use coupled with absence of bona fide use up to three months before the application, or five years of continuous non-use after registration. The proprietor may resist removal by showing special circumstances in the trade that excuse the non-use, by showing use through a registered user, or by showing that the use was bona fide commercial use of even small quantities.

Section 57 — rectification of the register

Section 57 is the principal rectification provision of the Trade Marks Act, 1999. Sub-section (1) provides that on application made in the prescribed manner to the Appellate Board (now read as the High Court) or to the Registrar by any person aggrieved, the Tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. Sub-section (2) provides that any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Tribunal, and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.

Section 57 therefore offers a wide ground catalogue: contravention or breach of condition (sub-section 1); absence of an entry that ought to be there; entry made without sufficient cause; entry wrongly remaining on the register; error or defect in an entry. The provision is not limited to formal errors — it extends to substantive challenges to validity, such as challenges that the mark was registered in violation of the absolute grounds in Section 9, the relative grounds in Section 11, or the substantive bars catalogued in the definitions in Section 2. The duty of the Tribunal in rectification proceedings is always to protect the public interest, irrespective of any hardship or inconvenience it may cause to the particular party whose trade mark is likely to deceive or cause confusion (Hiralal v. Ganesh AIR 1984 Bom 218).

The forum choice under Section 57 is significant. The application can be made either to the Registrar or to the High Court. The choice of forum is the applicant's. The Registrar's jurisdiction is concurrent with that of the High Court. Where the application is made to the Registrar, his order is appealable to the High Court. Where the application is made directly to the High Court, no further appeal lies within the High Court — though a Letters Patent Appeal or Supreme Court SLP may be available depending on the High Court's procedural rules.

Section 57(4) is the suo moto rectification provision. The Tribunal (Registrar) of its own motion, after giving notice and hearing to the parties concerned, can rectify the Register. The Registrar is empowered to initiate suo moto action whenever he comes to know about wrong or mistaken entries. He may get such knowledge either by himself or through some information. The Registrar is the custodian of the registered marks and is duty bound to maintain the Register with correct entries. The Section 57(4) power is significant for the integrity of the register — it permits the Registrar to act on his own initiative without waiting for an aggrieved person to apply.

Rectification petitions filed as a counterblast to infringement and passing-off actions initiated by the registered owner are not looked upon favourably. The Appellate Board (now the High Court) takes the view that, instead of subsequent rectification proceedings, parties who object to the registration should have opposed the initial grant of trade mark (Balaji Consumer Products of India v. Chinnaswami 2004 (29) PTC 610 (IPAB)). Mere fact that the parties are at loggerheads in trade is not a sufficient ground for giving locus standi to maintain a rectification application; the application must show sufficient or proper reasons for expunction (Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. 2003 (27) PTC 241 (SC)).

Section 124 — stay of suit pending rectification

Section 124 of the Trade Marks Act, 1999 is the procedural bridge between the suit court and the rectification forum. It addresses the recurrent fact-pattern in which the defendant in an infringement suit, after being sued, attacks the validity of the plaintiff's registered mark by way of a rectification petition. Section 124 governs the relationship between the two proceedings.

Sub-section (1) provides that, where in any suit for infringement of a trade mark the defendant pleads that registration of the plaintiff's trade mark is invalid, or the plaintiff in reply pleads that registration of the defendant's trade mark is invalid, the court trying the suit shall — if it is satisfied that the plea regarding invalidity is prima facie tenable — raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the High Court for rectification of the register. If the party concerned proves to the court that he has made any such application within the time so specified, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

Sub-section (2) provides that if no such application has been made within the time specified by the court, the issue as to the validity of the registration shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case. Sub-section (3) provides that the final order made in any rectification proceedings shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

Section 124 has three structural consequences. First, it allocates the validity question to the rectification forum (the High Court post-2021) and removes it from the suit court. Second, it stays the suit pending the rectification decision, preventing the suit court from deciding the case on its merits while the validity question is open. Third, it makes the rectification order binding on the suit court, ensuring that the substantive question of validity is decided once and not litigated twice.

The Section 124 mechanism is the principal procedural innovation of the 1999 Act in respect of the validity question. It replaces an earlier rule under the 1958 Act that allowed the suit court to decide validity itself. The change reflects the policy choice that validity is a register matter and should be decided by the forum that has rectification jurisdiction — the IPAB until 2021, and the High Court thereafter.

Section 134 — civil court jurisdiction in infringement and passing-off suits

Section 134 of the 1999 Act allocates the original civil jurisdiction in suits for infringement and passing off. Sub-section (1) provides that no suit for the infringement of a registered trade mark, or for any right in a registered trade mark, or for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.

Sub-section (2) is the forum-convenience provision peculiar to trade-mark and copyright statutes. It provides that, for the purposes of clauses (a) and (b) of sub-section (1), a District Court having jurisdiction shall include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain. The provision allows the plaintiff to sue at his own place of business — a striking departure from the general rule of the Code of Civil Procedure, 1908 that the suit must be instituted where the defendant resides or where the cause of action arose. The plaintiff's choice of forum is therefore very wide in trade-mark suits.

Section 134 dovetails with the remedies provision in Section 135 (common to passing off and infringement). The court may grant an injunction, damages or account of profits, and an order for delivery up of the infringing labels and marks for destruction or erasure. Sub-section (2) of Section 135 confers the power to grant ex parte interim injunctions and Anton Piller orders intended to preserve evidence and restrain the defendant from dealing with assets in a manner that would defeat the plaintiff's ability to recover damages.

The Commercial Courts Act, 2015 — overlay

A second procedural overlay sits on top of Section 134. The Commercial Courts Act, 2015 designates intellectual-property disputes — including trade-mark disputes — as commercial disputes within the meaning of Section 2(1)(c)(xvii) of that Act. The consequence is that intellectual-property suits above the specified value (currently three lakh rupees) are tried by Commercial Courts at the District Court level or, where the High Court has ordinary original civil jurisdiction (as in Delhi, Bombay, Calcutta, Madras and the Himachal Pradesh High Court), by the Commercial Division of the High Court. The Commercial Courts Act prescribes a faster procedural track, with case management, summary judgment, and timelines for filing of pleadings, intended to compress the litigation cycle.

The interplay between Section 134 of the 1999 Act and the Commercial Courts Act, 2015 is straightforward. Section 134 fixes the minimum forum (District Court) and the territorial jurisdiction (including the plaintiff's place of business). The Commercial Courts Act fixes the procedure within that forum. Both apply concurrently. The Commercial Courts overlay has had a significant effect on infringement litigation by accelerating the disposal timeline and standardising the procedural steps.

Appeals against the Registrar — post-2021

An appeal against an order of the Registrar lies, under the post-2021 framework, to the High Court within whose territorial jurisdiction the appropriate office of the Trade Marks Registry is situated. The territorial jurisdiction is defined by reference to the branch office of the Trade Marks Registry in which the application was filed and which heard the matter at first instance. So, for example, an order of the Mumbai branch office is appealable to the Bombay High Court; an order of the Delhi branch office to the Delhi High Court; and so on.

The appeal is generally heard by the Intellectual Property Division of the High Court (where one has been constituted) or by a single judge of the High Court (where it has not). The standard of review is the standard appellate review — the appellate court considers the matter afresh on questions of law and on questions of fact where the Registrar's findings are perverse or unsupported by the material on record. The High Court's order is itself subject to appeal under the Letters Patent (where applicable) and to the Special Leave jurisdiction of the Supreme Court under Article 136 of the Constitution.

Distinguishing the three jurisdictions

Registrar's jurisdiction (Sections 18, 19, 20, 21, 23, 25, 33, 50, 57(4)). First-instance, quasi-judicial. Concerned with the maintenance of the register and the disposal of registration matters. Original applications are filed before the Registrar, not the courts.

High Court's appellate and rectification jurisdiction (Sections 47, 57, and the post-2021 substitute references). Reviews the Registrar's orders on appeal; entertains rectification petitions either as a court of first instance (where the application is filed directly with the High Court) or on appeal (where the application was first filed with the Registrar). Concerned with the integrity of the register and with substantive validity questions.

Civil court's original jurisdiction (Section 134 read with Section 135). Tries suits for infringement, passing off, damages and injunctions. Concerned with the substantive disputes between trade-mark owners and alleged infringers. Operates under the Commercial Courts Act, 2015 procedural overlay where the suit value exceeds the threshold.

The three jurisdictions interact through Section 124. Where the validity of a registered mark is challenged in an infringement suit, the suit court raises an issue, gives the party three months to apply to the High Court for rectification, and stays the suit pending that decision. The rectification order then binds the suit court. The architecture ensures that the validity question is always decided by the rectification forum and not by the suit court.

Practical and exam takeaways

For state judiciary mains, CLAT PG and SEBI Legal Officer papers, this chapter is tested through:

1. The abolition of the IPAB by the Tribunals Reforms Act, 2021 with effect from 4 April 2021, and the transfer of its appellate and rectification jurisdiction to the High Courts.
2. The grounds for removal under Section 47 — absence of bona fide intention to use coupled with absence of use up to three months before application, or five years of continuous non-use.
3. The wide ground catalogue under Section 57 — contravention, absence of entry, entry without sufficient cause, entry wrongly remaining, error or defect — and the concurrent jurisdiction of the Registrar and the High Court.
4. The Section 124 mechanism for stay of suit pending rectification, including the three-month window, the binding effect of the rectification order, and the consequences of non-compliance.
5. The Section 134(2) forum-convenience rule that allows the plaintiff to sue where he resides or carries on business — a striking departure from the general CPC rule.
6. The Commercial Courts Act, 2015 overlay on intellectual-property suits, including the case-management timelines and summary judgment provisions.

The most common exam errors are (a) treating the IPAB as still functioning — it ceased to exist on 4 April 2021; (b) treating the validity question as one that the suit court can decide — it cannot, by virtue of Section 124; and (c) forgetting that Section 134(2) allows the plaintiff to choose his forum. A prudent answer always identifies the correct forum first, then turns to the substantive question. For the procedural intricacies of registration that the Registrar's jurisdiction operates upon, see also our chapter on the procedure for registration under Sections 18 to 24.

Frequently asked questions

When was the IPAB abolished and what happened to its jurisdiction?

The Intellectual Property Appellate Board was abolished on 4 April 2021 by the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, which was later replaced by the Tribunals Reforms Act, 2021. The 2021 Act amended the Trade Marks Act, 1999 to delete Sections 83 to 100 (the IPAB chapter) and substituted references to the IPAB throughout the Act with references to the High Court. All proceedings pending before the IPAB on that date were transferred to the High Court that had territorial jurisdiction. The change re-established the original High Court structure that had obtained before 2003.

Where does an appeal against the Registrar's order now lie?

Under the post-2021 framework, an appeal against an order of the Registrar lies to the High Court within whose territorial jurisdiction the appropriate office of the Trade Marks Registry is situated. So an order of the Mumbai branch office is appealable to the Bombay High Court, an order of the Delhi branch office to the Delhi High Court, and so on. The appeal is generally heard by the Intellectual Property Division of the High Court (where one has been constituted) or by a single judge. The High Court's order is itself subject to a Letters Patent Appeal (where applicable) and to a Special Leave Petition before the Supreme Court.

What is the procedure under Section 124 when validity is challenged in an infringement suit?

Where the defendant in an infringement suit pleads that the plaintiff's registration is invalid (or vice versa), the suit court must consider whether the plea is prima facie tenable. If satisfied, the court raises an issue and adjourns the case for three months to allow the party to apply to the High Court for rectification. If the application is made within time, the suit is stayed until the rectification proceedings are finally disposed of. If no application is made, the validity issue is deemed abandoned and the suit proceeds. The rectification order is binding on the suit court, which must dispose of the suit conformably.

Can the same rectification matter be filed before both the Registrar and the High Court?

No. Section 57 gives the applicant a choice of forum - the application may be made either to the Registrar or to the High Court, but not to both simultaneously for the same matter. The choice rests with the applicant. Where the application is filed with the Registrar, his order is appealable to the High Court. Where the application is filed directly with the High Court, no further appeal lies within the High Court (though a Letters Patent Appeal or SLP to the Supreme Court may be available). The Registrar also has suo moto rectification power under Section 57(4).

Why does Section 134(2) allow the plaintiff to sue at his own place of business?

Section 134(2) of the Trade Marks Act, 1999 allows a suit for infringement or passing off to be instituted in the District Court within whose jurisdiction the plaintiff resides, carries on business or personally works for gain. This is a deliberate departure from the general rule of the Code of Civil Procedure, 1908 that requires a suit to be filed where the defendant resides or where the cause of action arose. The forum-convenience rule recognises that trade-mark proprietors are commonly faced with infringement by widely scattered defendants and that requiring them to chase each defendant in his own forum would defeat the protection that the Act intends to provide.

Can a rectification petition be filed as a counterblast to an infringement suit?

It can be filed but the courts do not look upon such petitions favourably. The Appellate Board, in Balaji Consumer Products of India v. Chinnaswami 2004 (29) PTC 610 (IPAB), took the view that a party who wishes to attack the registration should have opposed the initial grant under Section 21 rather than wait until faced with an infringement suit and then file a rectification petition. The mere fact that the parties are at loggerheads in trade is not a sufficient ground for giving locus standi to maintain a rectification application. The applicant must show sufficient or proper reasons for expunction (Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. 2003 (27) PTC 241 (SC)).