Holding

The incumbent Chairperson’s tenure ended on 21 September 2019 and the Board may function without a judicial member; the application for extension was dismissed.

Summary

The International Association for Protection of Intellectual Property (India Group) sought a direction that the incumbent Chairperson of the Intellectual Property Appellate Board (IPAB) continue in office until a new Chairperson is appointed, invoking Section 89A of the Trademarks Act, 1999 and Section 184 of the Finance Act, 2017. The Court examined the tenure granted under the 2017 Rules, the subsequent amendment fixing the term to 21 September 2019, and the effect of the interim orders issued in the Rojer Mathew case. It held that the incumbent’s tenure legally ended on 21 September 2019 and could not be extended by virtue of the Finance Act or the interim orders. The Court also rejected the contention that the Board could not function without a judicial member, interpreting Section 84(2) and the non obstante clause in Section 84(3) to allow the Chairperson to discharge judicial functions and for technical members to act as Chairperson if qualified. Consequently, the application for continuation of the incumbent Chairperson was dismissed.

Issues considered

The legal effect of Section 89A of the Trademarks Act, 1999 and Section 184 of the Finance Act, 2017 on the tenure of the incumbent Chairperson of the IPAB.
Whether the interim orders in Rojer Mathew v. South Indian Bank Ltd. extend the incumbent’s tenure beyond the date fixed by the 2017 Rules.
Whether the IPAB can function without a judicial member as required by Section 84(2) of the Trademarks Act.
The applicability of the age limit and maximum tenure provisions under the Finance Act to appointments made before its commencement.

Legislation cited

Finance Act, 2017s. 161, s. 183, s. 184
Trademarks Act, 1999s. 84, s. 85, s. 86, s. 89, s. 89A

Subjects

Intellectual Property Appellate BoardChairperson tenureSection 89AFinance Act 2017Section 184Judicial memberTechnical memberInterim ordersAppointment age limit

Judgment

[2021] 1 S.C.R. 799 799

THE INTERNATIONAL ASSOCIATION FOR PROTECTION A
OF INTELLECTUAL PROPERTY (INDIA GROUP)
v.
UNION OF INDIA
(Miscellaneous Application No.2219 of 2020)
B
In
(W.P.(C) No.1431 of 2019)
FEBRUARY 12, 2021
[L. NAGESWARA RAO, HEMANT GUPTA
C
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 incumbent
Chairperson of the Intellectual Property Appellate Board (IPAB),
till a new Chairperson is appointed – It was urged that s.89A inserted D
in the TM Act stipulates that after the commencement of the Finance
Act, 2017, the term of office of appointments to the board would be
governed by the provisions of s.184 – In terms of s.184 of the 2017
Act, the outer limit prescribed the age limit of the Chairperson of
the board as 70 years – Applicant also relied on s. 84(2) of the TM E
Act and urged that there could be no bench without a judicial member
– Held: On 26.07.2017, the present incumbent was given the
additional charge of the Chairman in the IPAB, i.e. the Board, in
terms 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 Central
Government – The Judgment in Roger Mathew was delivered on F
13.11.2019 and it quashed the 2017 Rules – In terms of the interim
arrangement directed by the majority judgment in Rojer Mathew,
the appointments to Tribunals/Appellate Tribunals were to be “in
terms of the respective statutes before the enactment of the Finance
Bill, 2017..”, the amendments brought about through s.184, in terms G
of the maximum age up to which any Member or Chairperson can
hold office in a Tribunal could not apply in the case of the Board –
The 2017 Rules had fixed the tenure limits of Chairpersons and
members – In terms of those Rules of 2017 the tenure of the present

H
799
800 SUPREME COURT REPORTS [2021] 1 S.C.R.

A incumbent ended on 21.09.2019 – As the rules were later struck
down only on 13.11.2019 – At that time the prevailing interim orders
and clarifications in Kudrat Sandhu stated that the maximum tenure
of such members or chairpersons would be as stipulated in the parent
enactments, before the coming into force of the Finance Act, 2017,
or were expressed to be for a maximum of 3 years, in the case of
B
Chairpersons – The period had ended, so far as the applicant is
concerned, on 21.09.2019 – As far as submission that there could
be no bench without the judicial member is concerned, the s.85 of
the TM Act reveal that there is no bar for technical member to be
appointed as a regular Chairperson, provided she or he has for
C “at least two years, held the office of a Vice-Chairperson” – In the
instant case, the incumbent five technical members all hold legal
qualifications – These members has practical legal experience of
ten to fifteen years – Therefore, the argument that the technical
members, in their position at the board as of now, cannot function
without a Chairperson, is unsustainable.
D
Dismissing the application, the Court
HELD: 1. The present incumbent to the office of
Chairperson of the Board was appointed as the Chairman,
Appellate Tribunal for Forfeited Property (ATFP). On 26.07.2017,
E he was also given the additional charge of the Chairman in the
IPAB, i.e. the Board, in terms of the then extant 2017 Rules, for
a period of three years – or until further orders, whichever was
earlier. The order of appointment – as Chairperson of the Board
– was amended on 29.12.2017 by the Central Government. This
later order stated that the tenure of his appointment as Chairman
F of the Board was upto 21.09.2019 or till further orders, whichever
was earlier. [Paras 17 and 18][812-B-C; 813-A-B]
2. The arguments advanced on behalf of the applicant that
the incumbent chairperson continued to remain in office in view
of the declaration of law by Rojer Mathew, is insubstantial and
G cannot be countenanced. The other reason for not accepting this
contention is that if, for a moment it were to be assumed that in
terms of the interim arrangement directed by the majority
judgment in Rojer Mathew, the appointments to Tribunals/

H
THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 801
INTELLECTUAL PROPERTY v. UNION OF INDIA

Appellate Tribunals were to be “in terms of the respective statutes A
before the enactment of the Finance Bill, 2017..”, the amendments
brought about through Sections 184, in terms of the maximum
age up to which any Member or Chairperson can hold office in a
Tribunal could not apply in the case of the Board. This is because
the Rules of 2017 had fixed the tenure limits of chairpersons and
B
members of tribunals, including that of the chairperson of the
board. In terms of those Rules, (i.e., the rules of 2017) the tenure
of the present incumbent ended on 21.09.2019. As noticed earlier,
the rules were ultimately struck down only on 13.11.2019. At
that time, the only order prevailing, which had directed status
quo with respect to tenure and age limits for members and C
chairpersons of various tribunals, were the interim orders and
clarifications in Kudrat Sandhu, dated 09.02.2018; 20.03.2018;
16.07.2018 and 21.08.2018. These had stated that the maximum
tenure of such members or chairpersons would be as stipulated
in the parent enactments, before the coming into force of the
D
Finance Act, 2017, or were expressed to be for a maximum of 3
years, in the case of chairpersons. The period had ended, so far
as 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 the
Finance Act, 2017 had inserted Section 89A of the TM Act, E
(introduced by Section 161 of the former Act) which states that
the tenure of office and maximum age of retirement would be
governed 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 the F
pre-existing age and tenure limits (the existing tenure and age
limits have been indicated in Section 86 of the TM Act). However,
the Finance Act merely stipulates the potential maximum age
limits and tenure limits. In the case of Chairpersons, the maximum
age limit prescribed was seventy years (by virtue of second
proviso to Section 184 [1]). However, by virtue of the first proviso G
to Section 184 (1), members or chairpersons could be appointed
“for such term as specified in the rules made by the Central
Government but not exceeding five years from the date on which he
enters upon his office”. Thus, the outer limit of the tenure was five
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802 SUPREME COURT REPORTS [2021] 1 S.C.R.

A years. As noticed earlier, the Central Government had fixed the
tenure of chairperson of the board to be three years. By the time
this rule was held unconstitutional, the tenure of the incumbent
holding office of chairperson, of the board ended, on 21.09.2019.
The final judgment in Rojer Mathew, could not have per se been
applied to the facts of this case. The applicant’s contentions in
B
this regard are of no avail; it is after the judgment in Madras Bar
Association that the tenure has been mandated to be five years.
It is to be noticed that even the 2020 Rules did not prescribe 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
C such a course to be available, the four-year period too ended on
21.09.2020. [Para 23][815-D-H; 816-A-B]
4. The submissions of the applicant that the Board cannot
function without a judicial member are meritless. Section 84 (2)
of the TM Act no doubt states that a bench of the board shall
D 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 Section
84(3)(a) that a chairperson may, “in addition to discharging the
functions of the Judicial Member or Technical Member of the Bench
to which he is appointed, discharge the functions of the Judicial
E Member or, as the case may be, the Technical Member, of any other
Bench.” Thus, in the absence of any member, the chairperson
may, if the occasion so arises, act as technical or judicial member.
Section 87 enables a vice-chairperson, or as the case may be the
senior-most member of the board to act as chairperson in the
F event of a vacancy to that position, or in the event of the
incumbent’s inability to function in the post. Furthermore,
significantly, Section 85 inter alia stipulates the qualifications for
the post of chairperson or vice-chairperson. The relevant
provisions of this section reveal that there is no bar for a technical
member to be appointed as a regular chairperson, provided she
G or he has for “at least two years, held the office of a Vice-
Chairperson”. In fact, the incumbent five technical members all
hold legal qualifications (three of them holding masters in law,
including one who holds a post-doctoral qualification). Four of

H
THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 803
INTELLECTUAL PROPERTY v. UNION OF INDIA

these incumbent members were practising advocates in A
specialized fields of intellectual property (trademarks, and
copyright) and one technical member (patents) had experience
in the Patent Office. These members had practical legal
experience of ten to fifteen years. The fact that they were
appointed as technical members cannot obfuscate the fact that
B
they are legally trained and qualified. Therefore, the argument
that the technical members, in their position at the board as of
now, cannot function without a chairperson, is unsustainable.
[Para 25][816-F-H; 817-A-D; 818-A-B]
Rojer Mathew v. South Indian Bank Ltd., (2020) 6 SCC
1 : [2019] 16 SCR 1 – followed. C

Madras Bar Association v Union of India (2020) SCC
OnLine SC 962; Kudrat Sandhu v Union of India 2018
SCC Online 1335; Kudrat Sandhu v Union of India
2018 (18) SCC 796 – referred to.
D
Case Law Reference
[2019] 16 SCR 1 followed Para 3
2018 (18) SCC 796 referred to Para 21
CIVIL ORIGINAL JURISDICTION : M.A. No. 2219 of 2020 in
E
Writ Petition (Civil) No. 1431 Of 2019
(Under Article 32 of The Constitution Of India)
K K Venugopal, AG, Balbir Singh, ASG, A.S.Chandhiok, Siddharth
Luthra, R Balasubramanium, Sr. Advs., Hemant Singh, Ms. Mamta R.
Jha, Waseem Shuaib Ahmed, Sambhav Jain, Ms. Simran Kohli, Ritesh F
Kumar, 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. Chinmayee
Chandra, Shyam Gopal, Advs. for the appearing parties.
The Judgment of the Court was delivered by G
S. RAVINDRA BHAT, J.
1. This judgement will dispose of an application by which directions
are sought that till a new chairperson of the Intellectual Property Appellate
Board (hereafter referred to as “the board” or “IPAB”), is appointed,
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804 SUPREME COURT REPORTS [2021] 1 S.C.R.

A the incumbent (whose tenure had been extended by interim orders of
this court, up to 31.12.2020) should continue to function as Chairperson.
2. The applicant (the International Association for Protection of
Intellectual Property [India Group]) had preferred a Writ Petition (WP(C)
1431/2019), which was disposed of by this court by a judgement along
B with a batch of other petitions and applications on 27 th November 2020,
in the judgement reported as Madras Bar Association v Union of
India1. The applicant seeks extension of the term of the incumbent
Chairperson of the board stating that his appointment was made under
section 89A of the Trademarks Act, 1999 (“TM Act” hereafter). The
applicant urges that Section 184 of the Finance Act, 2017, prescribes the
C term of office and the conditions of service of Chairperson and members
of various tribunals including that of the Board. Section 161 of the Finance
Act inserted Section 89A to the TM Act-which stipulates that the term
of office of appointments to the board after the date of commencement
of the Finance Act would be governed by the provisions of the Section
D 184 of the said Finance Act. The outer limit prescribing the age limit of
the chairperson of the board is 70 years, in terms of Section 184.
3. It is contended that in the judgement in Rojer Mathew2 this
court had directed that appointments made to the board preceding the
rules framed in 2020 under the Finance Act within (hereafter the 2020
E Rules) were governed by the parent enactment. Reliance is placed on
the 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 Trademarks
Act (hereafter the ‘TM Act’). In this context, it is contended that since
the outer limit of the tenure of the chairperson is 70 years under the
parent Act, i.e. the TM Act, the age of 65 years contemplated under
F Section 86 of that Act no longer applies.
4. Learned counsel contrasts Section 86 and Section 89 of the
TM Act and contends that though Section 86 on the one hand prescribes
the outer age limit (for the tenure of chairperson) as 65 years, that is
over borne by the provisions of section 89A, which states that the terms
G and conditions hitherto applicable would no longer be so and that in matters
of conditions of service and tenure of appointment, the provisions of
section 184 of the Finance Act would apply. It is contended by senior

1
(2020) SCC OnLine SC 962.
2
H Rojer Mathew v. South Indian Bank Ltd., (2020) 6 SCC 1.
THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 805
INTELLECTUAL PROPERTY v. UNION OF INDIA [S. RAVINDRA BHAT, J.]

counsel that the Rules were originally framed with effect from A
01.06.2017, under which the present incumbent was appointed. These
rules were set aside by Rojer Mathew, in which all sitting members and
chairpersons of various tribunals were protected, till new rules were
framed. The Rules framed in 2020, have now been substantially read
down or quashed. The clarification that the present incumbent, in fact,
B
would continue to hold office in spite of attaining the age of 65 years,
logically flows from the ruling in Madras Bar Association (supra). A
clarification of this is essential, given that in law, the outer limit has now
been extended to 70 years. The attention of this court is also drawn to
para 53 (ix) of the judgement of this court dated 27th November 2020.
5. Learned counsel relied upon the said judgement. It was argued C
that the orders made by this court during the pendency of that case, till
final judgment, i.e. dated 27th of November, 2020 protected the tenures
of all incumbent tribunal members and their chairpersons. Specific
reliance was placed upon the order dated 16th September 2020, which
had extended the tenure of office of all incumbent members of all tribunals, D
to 31st December, 2020. The applicant also urged that it is essential that
there is continuity and that taking into consideration the workload of the
board, it is absolutely essential that it is headed by a properly qualified
chairperson.
6. The learned senior counsel for applicant particularly relies on E
Section 84(2) of the TM Act and urges that there can be no bench
without a judicial member. It is submitted that at the moment none of the
members of the board are judicial appointees, but rather are technical
members. It is submitted that the board does not even have a Vice-
Chairman, who can in the absence of the Chairperson officiate as the
acting Chairperson. Therefore, it is imperative that the clarifications and F
directions sought should be granted.
7. The application was opposed on behalf of certain third parties
who urge that this court should not grant the relief which the applicant
seeks. In this regard, it is pointed out that the tenure of office in terms of
the order of appointment of the present incumbent to the office of G
chairperson of the board clearly stipulated that the tenure for which he
could continue to serve on the board was till 21stSeptember 2019. It is
contended in this context that the original appointment was made when
the incumbent chairperson of the board was holding another office as
chairperson of a quasi-judicial body. The order of appointment, originally H
806 SUPREME COURT REPORTS [2021] 1 S.C.R.

A made in 2017, no doubt did not indicate a tenure; however according to
applicable law (i.e. the Rules of 2017) the maximum tenure was 3 years.
However, that order was amended to specifically read that the order
that the appointment would cease upon completion of a specific date,
i.e. 21.09.2019.
B 8. The third-party objectors also opposed the interpretation given
to Section 86 and 89A. It was contended that the change brought about
by section 89A was merely to indicate that the tenure of office of the
chairperson and members would thenceforth (i.e. after the enactment
and coming into force of the Finance Act of 2017) be in accordance
with Section 184 of the Finance Act. It is urged in this context that
C Section 184 does not ipso facto prescribe or indicate any term of
appointment or tenure, except to enumerate outer limits of tenure terms
and maximum age for members or chairpersons of tribunals to hold office.
The legislation leaves the matter to the rules that were to be framed
under the said Finance Act. It is submitted in other words that, the Act
D per se does not prescribe any terms, but rather indicates outer limits.
Since the entire conditions of service, including the indicative tenure of
office was to be prescribed in respect of each tribunal by the rules, even
if for a moment, the applicant’s contentions were to be understood as
meaning that the incumbent was appointed first under the old rules of
2017, his term of office nevertheless ended in September 2019. This
E was before the judgement in Rojer Matthew was delivered. This court
in Rojer Matthew specifically stated that as the then existing rules framed
in 2017 were held to be unconstitutional, a window of continuing in office,
in terms of the parent enactment, was applicable. It is submitted that in
the context of the present incumbent of the board, the tenure of office
F obviously could not have been extended since the outer limit under the
parent act was 65 years.
Relevant provisions
9. By virtue of the provisions of Part XIV of the Finance Act
2017, 25 (twenty-five) central enactments were amended so that, from
G the appointed date, firstly, provisions relating to terms and conditions of
service of the members of those tribunals were substituted with provisions
allowing the Central Government to specify the same with rules under
the Finance Act. Secondly, eight existing tribunals established under
different legislations (specified in the Ninth Schedule) were abolished
H and their respective jurisdictions and powers were incorporated into seven
THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 807
INTELLECTUAL PROPERTY v. UNION OF INDIA [S. RAVINDRA BHAT, J.]

existing tribunals, reducing the number of tribunals from 26 to19. Thirdly, A
under Section 184 of the Finance Act, the Central Government was
authorized to frame delegated legislation (rules) spelling out the eligibility
criteria, selection process, removal, salaries and allowances, tenure and
other terms and conditions of service for the remaining 19 tribunals
(specified in the Eighth Schedule). The constitutional validity of Section
B
184 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 a
batch of writ petitions and appeals, of which judgment was rendered in
Rojer Mathew v South Indian Bank Ltd. (supra).The judgment,
delivered by a bench of five judges, upheld Section 184. However, the C
2017 Rules were held to be contrary to the constitutional scheme as
interpreted by several previous rulings of Constitution Benches. As a
result of that judgment, the Central Government framed fresh rules in
2020 (hereafter “2020 Rules”) which were again questioned in the
Madras Bar Association case. The Madras Bar Association case is
D
a sequel (to Rojer Mathew), by which this court considered and
pronounced upon the validity of the 2020 Rules, and read down several
of them.
10. The relevant provisions of the Finance Act, 2017 are as follows:
“Section 161. In the Trade Marks Act, 1999— E
(a) for the word “Chairman” or “Vice-Chairman”, wherever
it occurs, the word “Chairperson” or “Vice-Chairperson”
shall be substituted;
(b) in section 83, after the words “under this Act”, the words
and figures “and under the Copyright Act, 1957” shall be F
inserted;
(c) after section 89, the following section shall be inserted,
namely: —
“89A. Notwithstanding anything in this Act, the qualifications,
G
appointment, term of office, salaries and allowances,
resignation, removal and other terms and conditions of service
of the Chairperson, Vice-Chairperson and other Members of
the Appellate Board appointed after the commencement of
Part XIV of Chapter VI of the Finance Act, 2017, shall be
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808 SUPREME COURT REPORTS [2021] 1 S.C.R.

A governed by the provisions of section 184 of that Act: Provided
that the Chairperson, Vice-Chairperson and other Members
appointed before the commencement of Part XIV of Chapter
VI of the Finance Act, 2017, shall continue to be governed
by the provisions of this Act, and the rules made thereunder
as if the provisions of section 184 of the Finance Act, 2017,
B
had not come into force.”.
11. Sections 183 and 184 occur in Part S of the Finance Act, 2017
and read as follows:
“S.—CONDITIONS OF SERVICE OF CHAIRPERSON
C AND MEMBERS OF TRIBUNALS, APPELLATE
TRIBUNALS AND OTHER AUTHORITIES
183. Notwithstanding anything to the contrary contained in
the provisions of the Acts specified in column (3) of the Eighth
Schedule, on and from the appointed day, provisions of section
D 184 shall apply to 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 Authorities as specified
in column (2) of the said Schedule:

E Provided that the provisions of section 184 shall not apply to
the Chairperson, Vice-Chairperson, Chairman, Vice-
Chairman, President, Vice-President, Presiding Officer or, as
the case may be, Member holding such office as such
immediately before the appointed day. Qualifications, terms
and conditions of service of Chairperson and Member.
F
Qualifications, terms and conditions of service of Chairperson,
Judicial Member and Expert Member.
184. (1) The Central Government may, by notification, make
rules to provide for qualifications, appointment, term of office,
salaries and allowances, resignation, removal and the other
G
terms 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 Authorities
as specified in column (2) of the Eighth Schedule:
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THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 809
INTELLECTUAL PROPERTY v. UNION OF INDIA [S. RAVINDRA BHAT, J.]

Provided that the Chairperson, Vice-Chairperson, Chairman, A
Vice-Chairman, President, Vice-President, Presiding Officer
or Member of the Tribunal, Appellate Tribunal or other
Authority shall hold office for such term as specified in the
rules made by the Central Government but not exceeding five
years from the date on which he enters upon his office and
B
shall 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 after
he has attained such age as specified in the rules made by
the Central Government which shall not exceed— C

(a) in the case of Chairperson, Chairman or President, the
age of seventy years;
(b) in the case of Vice-Chairperson, Vice-Chairman, Vice-
President, Presiding Officer or any other Member, the age of D
sixty-seven years:
(2) Neither the salary and allowances nor the other terms
and conditions of service of Chairperson, Vice-Chairperson,
Chairman, Vice-Chairman, President, Vice-President,
Presiding Officer or Member of the Tribunal, Appellate E
Tribunal or, as the case may be, other Authority may be varied
to his disadvantage after his appointment”
12. In Rojer Mathew after pronouncing that the 2017 Rules were
unsustainable, and quashing them, with a direction to the Central
Government to frame new Rules, this court also directed as follows: F
“Interim relief
224. As the Tribunal, Appellate Tribunal and Other Authorities
(Qualification, Experience and Other Conditions of Service
of Members) Rules, 2017 have been struck down and several
directions have been issued vide the majority judgment for G
framing of fresh set of rules, we, as an interim order, direct
that appointments to the Tribunal/Appellate Tribunal and the
terms and conditions of appointment shall be in terms of the
respective statutes before the enactment of the Finance Bill,
2017. However, liberty is granted to the Union of India to
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810 SUPREME COURT REPORTS [2021] 1 S.C.R.

A seek modification of this order after they have framed fresh
rules in accordance with the majority judgment. However, in
case any additional benefits concerning the salaries and
emoluments have been granted under the Finance Act, they
shall not be withdrawn and will be continued. These would
equally apply to all new Members.”
B
13. The board has been set up by Section 83 of the TM Act to
exercise the jurisdiction, powers and authority conferred on it by or under
that enactment. Section 84 prescribes the composition of the board, which
consists of a chairperson, a vice chairperson “and such number of
other Members, as the Central Government may deem fit and, subject
C to the other provisions of this Act, the jurisdiction, powers and
authority of the Appellate Board may be exercised by Benches
thereof.”
14. Sections 84 (2) and (3) are of some relevance in the present
context; they read as follows:
D
“(2) Subject to the other provisions of this Act, a Bench shall
consist of one Judicial Member and one Technical Member
and 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 Judicial
Member or Technical Member of the Bench to which he is
appointed, discharge the functions of the Judicial Member
F or, as the case may be, the Technical Member, of any other
Bench;
(b) may transfer a Member from one Bench to another Bench;
(c) may authorise the Vice-Chairperson, the Judicial Member
or the Technical Member appointed to one Bench to discharge
G also the functions of the Judicial Member or the Technical
Member, as the case may be, of another Bench.
15. Sections 86 and 87 read as follows:
“86. Term of office of Chairperson, Vice-Chairperson and
other Members.—The Chairperson, Vice-Chairperson or other
H
THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 811
INTELLECTUAL PROPERTY v. UNION OF INDIA [S. RAVINDRA BHAT, J.]

Members shall hold office as such for a term of five years A
from the date on which he enters upon his office or until he
attains,—
(a) in the case of Chairperson and Vice-Chairperson, the age
of sixty-five years; and
(b) in the case of a Member, the age of sixty-two years, B
whichever is earlier.
87. Vice-Chairperson] or senior-most Member to act as 1
[Chairperson] or discharge his functions in certain
circumstances—
C
(1) In the event of or any vacancy in the office of the
Chairperson by reasons of his death, resignation or otherwise,
the Vice-Chairperson and in his absence the senior-most
Member shall act as Chairperson until the date on which a
new 1 Chairperson, appointed in accordance with the
provisions of this Act to fill such vacancy, enters upon his D
office.
(2) When the Chairperson is unable to discharge his functions
owing to his absence, illness or any other cause, the Vice-
Chairperson and in his absence the senior-most Member shall
discharge the functions of the Chairperson until the date on E
which the Chairperson resumes his duty.”
16. Section 89A of the TM Act reads as follows:
“89A. Qualifications, terms and conditions of service of
Chairperson, Vice-Chairperson and Member.—
F
Notwithstanding anything in this Act, the qualifications,
appointment, term of office, salaries and allowances,
resignation, removal and other terms and conditions of service
of the Chairperson, Vice-Chairperson and other Members of
the Appellate Board appointed after the commencement of
Part XIV of Chapter VI of the Finance Act, 2017 (7 of 2017), G
shall be governed by the provisions of section 184 of that
Act:
Provided that the Chairperson, Vice-Chairperson and other
Members appointed before the commencement of Part XIV of
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812 SUPREME COURT REPORTS [2021] 1 S.C.R.

A Chapter VI of the Finance Act, 2017 (7 of 2017), shall continue
to be governed by the provisions of this Act, and the rules
made thereunder as if the provisions of section 184 of the
Finance Act, 2017, had not come into force”
17. The present incumbent to the office of Chairperson of the
B Board was appointed as the Chairman, Appellate Tribunal for Forfeited
Property (ATFP). The terms and conditions under which he was appointed
have not been placed on record; however, it appears that the appointment
was soon after he demitted office as Judge of the Delhi High Court,
sometime after September 2016. On 26.07.2017, he was also given the
additional charge of the Chairman in the IPAB, i.e. the Board, in terms
C
of the then extant 2017 Rules, for a period of three years – or until
further orders, whichever was earlier. The said order of 20.07.2017 is
extracted below:
F. No.P-24017/44/2017-IPR-I
D Government of India
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 Forfeited
Property to the post of Chairman, in the Intellectual Property
F
Appellate Board (IPAB), Chennai, in the scale of pay as
prescribed in the Tribunal, Appellate Tribunals and other
Authorities (Qualifications, Experience and other Conditions
of Service of Members) Rules, 2017, for a period of three
years with effect from the date of assumption of charge to the
G post, or until further orders, whichever is the earlier.
(B.S. Nayak)
Under Secretary to the Govt. of India
Tel: 23061257"
H
THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 813
INTELLECTUAL PROPERTY v. UNION OF INDIA [S. RAVINDRA BHAT, J.]

18. The order of appointment – as Chairperson of the Board – A
was amended on 29.12.2017 by the Central Government. This later order
stated that the tenure of his appointment as Chairman of the Board was
upto 21.09.2019 or till further orders, whichever was earlier. The later
order of 29.12.2017 reads as follows:
“No. P-24017/44/2017-IPR-I B
Government of India
Ministry of Commerce & Industry
Department of Industrial Policy & Promotion
(IPR – Establishment Section) C
***
Udyog Bhavan, New Delhi-110 011,
Dated 29 th December, 2017
ORDER D

In supersession of this Department’s earlier order dated 20th
July, 2017, the President of India is pleased to entrust the
additional charge of the post of Chairman, Intellectual
Property Appellate Board (IPAB) to Justice (Retd.) Manmohan
Singh, Chairman, Appellate Tribunal for Forfeited Property E
(ATFP) in addition to his current duties from the date of
assumption of charge of the post up to 21.09.2019 i.e. till his
tenure on the post of chairmen, ATFP or until further orders,
whichever is earlier.”
(B.S. Nayak) F
Under Secretary to the Govt. of India
Tel: 23061257"
19. The judgment in Rojer Mathew by the five judge Constitution
Bench was delivered on 13.11.2019. That judgment pronounced upon G
the validity of the 2017 Rules and quashed them. However, before the
2017 Rules were declared unconstitutional, the tenure of the incumbent
to the office of the Chairperson of the Board ended on 21.09.2019. This
Court recollects that the operation of the 2017 Rules had not been
suspended during the pendency of the petitions challenging them (i.e.
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814 SUPREME COURT REPORTS [2021] 1 S.C.R.

A Rojer Mathew batch of cases). During the pendency of the said batch
of 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/
B Administrative/Expert/Technical Members of all the Tribunals
shall be for a period of five years or the maximum age that
was fixed/determined under the old Acts and Rules;”
20. On 16.07.20183, the following directions in regard to the age
of the superannuation of Member of the Income Tax Appellate Tribunal
C (ITAT)were made:
“At this juncture, we may note that there is some confusion
with regard to the Income Tax Appellate Tribunal (ITAT) as
regards the age of superannuation. We make it clear that the
person selected as Member of the ITAT will continue till the
D age 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 clarify
the previous orders, in the context of the President and Members of the
Customs Excise and Service Tax Appellate Tribunal (CESTAT). It was
E expressly stated that the tenure of members would be upto their attaining
the age of 62 and, in the case of the President (of CESTAT) the tenure
age limit would be 65 years.4
22. Given these circumstances, the arguments advanced on behalf
of the applicant that the incumbent chairperson continued to remain in
F office in view of the declaration of law by Rojer Mathew, is insubstantial
and cannot be countenanced. The other reason for not accepting this
contention is that if, for a moment it were to be assumed that in terms of
the interim arrangement directed by the majority judgment in Rojer
Mathew (in para 224 extracted above), the appointments to Tribunals/
Appellate Tribunals were to be “in terms of the respective statutes
G
before the enactment of the Finance Bill, 2017..”, the amendments
brought about through Sections 184, in terms of the maximum age up to
which 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)
H 4
This order is reported as Kudrat Sandhu v Union of India 2018 (18) SCC 796
THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 815
INTELLECTUAL PROPERTY v. UNION OF INDIA [S. RAVINDRA BHAT, J.]

not apply in the case of the Board. This is because the Rules of 2017 A
had 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 on
21.09.2019. As noticed earlier, the rules were ultimately struck down
only on 13.11.2019. At that time, the only order prevailing, which had
B
directed status quo with respect to tenure and age limits for members
and chairpersons of various tribunals, were the interim orders and
clarifications in Kudrat Sandhu, dated 09.02.2018; 20.03.2018;
16.07.2018 and 21.08.2018. These had stated that the maximum tenure
of such members or chairpersons would be as stipulated in the parent
enactments, before the coming into force of the Finance Act, 2017, or C
were expressed to be for a maximum of 3 years, in the case of
chairpersons. 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 Finance
Act, 2017 had inserted Section 89A of the TM Act, (introduced by Section D
161 of the former Act) which states that the tenure of office and maximum
age of retirement would be governed 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 the pre-existing age and tenure limits (the existing tenure and
age limits have been indicated in Section 86 of the TM Act). However, E
the Finance Act merely stipulates the potential maximum age limits and
tenure limits. In the case of Chairpersons, the maximum age limit
prescribed was seventy years (by virtue of second proviso to Section
184 [1]). However, by virtue of the first proviso to Section 184 (1),
members or chairpersons could be appointed “for such term as F
specified in the rules made by the Central Government but not
exceeding five years from the date on which he enters upon his
office”. Thus, the outer limit of the tenure was five years. As noticed
earlier, the Central Government had fixed the tenure of chairperson of
the board to be three years. By the time this rule was held unconstitutional,
the tenure of the incumbent holding office of chairperson, of the board G
ended, 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/Judicial
Members of the Board at 3 years and indicated that the outer limit for the tenure of
Chairperson would be 67 years whereas that of the Vice Chairman and Members would
be 65 years. H
816 SUPREME COURT REPORTS [2021] 1 S.C.R.

A have per se been applied to the facts of this case. The applicant’s
contentions in this regard are of no avail; it is after the judgment in
Madras Bar Association (supra) that the tenure has been mandated
to be five years. It is to be noticed that even the 2020 Rules did not
prescribe 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 such
B
a 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 and
age limits were not only through the Schedule to the Finance Act, 2017,
but also through its substantive provisions - Sections 156 to 182.6 These
provisions introduced changes relating to tenure and age limits for
C members and chairpersons of 19 tribunals (including the Income Tax
Appellate Tribunal; Securities Appellate Tribunal, Competition
Commission of India, CESTAT, Railway Claims Tribunal, Central
Administrative Tribunal, Debt Recovery Tribunal, Debt Recoveries
Appellate Tribunals, the IPAB -i.e. the Board, in this case, etc.). All
these provisions, much like Section 89A of the TM Act, aligned
D
Parliamentary intention to legislate uniform tenure limits and maximum
age for members and chairpersons. Therefore, Section 89A is only part
of the entire legislative design. However, that has no bearing on the
circumstances of the present case.
24. The last contention which this court has to deal with is the
E applicant’s position that the Board cannot function without a judicial
member, and that at present, only the incumbent Chairperson is a judicial
member, and that if his tenure is not extended by a judicial order, the
Board would be unable to function. Subsidiary to this argument is that no
member can function as a Chairperson, as none of the existing members
F are 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 bench
of 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 Section
G 84(3)(a) that a chairperson may, “in addition to discharging the
functions of the Judicial Member or Technical Member of the Bench

6
In a part entitled PART XIV AMENDMENTS TO CERTAIN ACTS TO PROVIDE FOR
MERGER OF TRIBUNALS AND OTHER AUTHORITIES AND CONDITIONS OF
H SERVICE OF CHAIRPERSONS, MEMBERS, ETC.
THE INTERNATIONAL ASSOCIATION FOR PROTECTION OF 817
INTELLECTUAL PROPERTY v. UNION OF INDIA [S. RAVINDRA BHAT, J.]

to which he is appointed, discharge the functions of the Judicial A
Member or, as the case may be, the Technical Member, of any other
Bench.” Thus, in the absence of any member, the chairperson may, if
the occasion so arises, act as technical or judicial member. Section 87
enables a vice-chairperson, or as the case may be the senior-most
member of the board to act as chairperson in the event of a vacancy to
B
that position, or in the event of the incumbent’s inability to function in the
post. Furthermore, significantly, Section 85 inter alia stipulates the
qualifications for the post of chairperson or vice-chairperson. The relevant
provisions of this section (extracted below)7 reveal that there is no bar
for a technical member to be appointed as a regular chairperson, provided
she or he has for “at least two years, held the office of a Vice- C
Chairperson”. In fact, the incumbent five technical members all hold
legal qualifications8 (three of them holding masters in law, including one
who holds a post-doctoral qualification). Four of these incumbent members
were practising advocates in specialized fields of intellectual property
(trademarks, and copyright) and one technical member (patents) had
D
experience in the Patent Office. These members had practical legal
experience of ten to fifteen years. The fact that they were appointed as

7
85. Qualifications for appointment as Chairperson, Vice-Chairperson, or other
Members.
(1) A person shall not be qualified for appointment as the Chairperson unless he— E
(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 Technical
Member; or
(b) has been a Member of the Indian Legal Service and has held a post in Grade I of that
Service or any higher post for at least five years. F
(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 of
that 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 under
the Trade and Merchandise Marks Act, 1958 (43 of 1958), or both, and has held a post G
not 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 in
trade mark law.
8
These particulars are available at the website of the Intellectual Property Appellate
Board 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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818 SUPREME COURT REPORTS [2021] 1 S.C.R.

A technical members cannot obfuscate the fact that they are legally trained
and qualified. Therefore, the argument that the technical members, in
their position at the board as of now, cannot function without a
chairperson, is unsustainable.
26. In view of the above conclusions, this court holds that the
B applicant cannot be granted any relief. The application is accordingly
dismissed; there shall, however, be no order on costs.

Ankit Gyan Application dismissed.

C

D

E

F

G

H