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Judgment
S. Chandrasekaran, Technical Member
The respondent No. 1 has filed this miscellaneous petition numbered as 21/2008, seeking favourable orders for hearing of this revocation matter at the Circuit
Bench at Mumbai instead of Chennai.
This miscellaneous petition was listed and came up before this Appellate Board on 22.07.2008 to decide on the issue of hearing at Circuit bench at Mumbai. We
heard Shri A.A. Mohan, learned Counsel for the respondent No. 1/petitioner and Shri Debnath Gosh, learned Counsel for the applicant/respondent. The learned
Counsel for the respondent No. 1 submitted that the following are clear and valid reasons as to why this matter should be heard at the circuit bench at Mumbai:
a) that the Patent 197877 was sealed and granted by IPO, Mumbai on 21.04.2006 and all the concerned and relevant records of the Patents files are only available at
IPO Mumbai;
b) that the applicant seeking revocation has their Registered Office at Kolkata and not at Chennai;
c) that the respondent No. 1 has their head office and R&D Establishments situated only at Mumbai; the patent in question was filed and examined and finally
granted at IPO, Mumbai, but no part of cause of action had arose at Chennai;
d) that all the experts who are all conversant with the technical niceties of patent are all available only at Mumbai;
e) that holding the hearing at Chennai Bench, makes the counsels for both the parties to run all the way from Kolkata or Mumbai to attend every hearing at Chennai
and the learned Counsel submitted that it had caused untold miseries, hardship and inconvenience to both the parties to the proceedings. In this circumstance that
neither the first respondent nor the applicant has any sort of business or any commercial activity or other establishment in Chennai. Hence the learned Counsel
submitted that it is very unjust for the Appellate Board to have a hearing only at Chennai and added that no part of the cause has any valid ground to attract the
jurisdiction provision of Chennai;
f) that according to the patent proceedings, the court which has jurisdiction to try any disputes among the parties is also the Bombay High Court;
g) that Section 117B of the Patent Act, 1970 says that the provisions in Sub-sections (2) to (6) of the Section 84, Sections 87,92, 95 and 96 of the Trade Marks Act,
1999 shall apply to the Appellate Board in the discharge of its functions under the Patent Act as they apply to it in the discharge of its function referred under Trade
Marks Act, 1999 and
h) that the allocation of business among benches of Intellectual Property Appellate Board rest with the discretion of the Chairman. It has been evident by the
combined reading of the provisions 84(4) and (5) of Trade Marks Act, 1999 which contemplates that even after the constitution of benches through notification by
Central Government and business has been distributed amongst benches, the Chairman has to decide finally whether such matter falls within the purview of the
business allocated to a bench or not.
The learned Counsel for the respondent No. 1 /petitioner submitted that following are the details of High Courts having their benches outside the Principal Bench
or seat etc.
The learned Counsel also submitted that the States Reorganization Act, 1956 (in short the said Act) upon which various High Courts has been established contains
the provision for the place of the permanent seat of the High Court, the jurisdiction to have either permanent Benches or Circuit Benches, place or places outside the
principal city. Moreover the learned Counsel for the respondent No. X submitted that with regard to the constitution of Madurai Bench, the single bench decision of
Madras High Court is a fit case viz., K. Sridhar Kumar v. Union of India and Ors. 2002 1 .LW.2.742 wherein it was held that, ""the power of the Chief Justice to
appoint under Sub-section (3) of the Section 51 of the said Act, the sittings of the judges and Division Courts of the High Court for a new State at places other than
the place of principal seat or the permanent Bench is in the unquestioned domain of the Chief Justice...the opinion of the Chief Justice to appoint the seat of the High
Court for new states at a place other than principal seat under Sub-section (3) of the Section 51 of the said Act must therefore normally prevail because it is for the
more convenient transaction of judicial business.
In this connection, the learned Counsel for the respondent No. 1 referred to the decision of Hon'ble Chennai Court reiterating the holding of the Apex Court in the
case called State of Maharashtra v. Narayanan where the Lordship held in the para 20 that ""now according to the provision of this bill the judges of the supreme
court may be sent on circuit throughout the country...it may be impossible in a country like India to bring justice to every man's door, but at all events the system now
proposed will bring it far nearer than at present."" The single bench decision was reiterated by the Division Bench in the case called R. Suresh Kumar Advocate v.
Union of India and Ors. 2004 2 LW.277.
By applying the same analogy to the instant case it is high time to constitute circuit benches to hear patent cases at the place where the cause of action arose. The
learned Counsel also submitted that it is pertinent to note that it is the practice and procedure of this Appellate Board in trademark matters to hear the cases where
the mark was registered/appropriate office of jurisdiction of the registered trademark in question. As there is no specific bar to hear the patent cases by the existing
circuit benches and as per the Section 116B of the Patent Act 1970 the procedures followed in respect of the trademark cases in discharge of function of this Board
shall be followed, since in the instant case the Controller of the Mumbai issued the patent for which revocation has been sought. As per rule 4 of the Patents Rules,
2003 the appropriate office of jurisdiction in respect of the impugned patent is Patent Office, Mumbai. While the discretion of allocation of the business amongst the
circuit benches vest with the Chairman, he would be expected to exercise his discretion as per the above referred decisions of Hon'ble Supreme Court and High
Court which has recognized the need of more convenient transaction of judicial business and which suits the judicial need of every men within their reachable
parameter.
The learned Counsel submitted that it is pertinent to note that some other quasi-judicial bodies constituted by Central Government notification which has given
power to the respective Chairman on deciding the allocation of business amongst benches has been exercised in the phase of convenience and more accessible with
the Region from where the cause of action arose. For example the Administrative Tribunal Act, 1985 which has parallel legislation with the Patent Act and which
has very similar provision about the distribution of business amongst benches under Section 18, read as:
(1) Where [Benches of a Tribunal are constituted], the Appropriate Government may from time to time, by notification, make provisions as to the distribution of the
business of the Tribunal amongst Benches and specify the matters which may be dealt with by each Bench.
(2) If any question arises as to whether any matter falls within the purview of the business allocated to a Bench of a Tribunal, the decision of the Chairman thereon
shall be final.
The learned Counsel for the respondent No. 1 submitted that by exercising the given discretion, the Central Administrative Tribunal has constituted a number of
Regional Benches.
Further, the Company Law Board which has the similar Regulation under Chapter-II Regulation 4 (1 A) it shall also be lawful for the Chairman to provide the
matters falling under Section 235 and 237 of the Act and matters falling under chapter-VI of Part VI of the Act in so far as they relate to Southern Region shall be
dealt with by a bench consisting of not less than two members (which shall be known as Additional Principal Bench),
The above power has been exercised fairly by the Chairman and Regional Benches were constituted thereon. In the same breath the Custom, Excise and Service
Tax Appellate Tribunal (CESAT) has also have Regional benches at Delhi, Kolkatta, Chennai and Bangalore.
The learned Counsel for the respondent No. 1 submitted that various High Courts have given importance to the cause of action that has arisen in a place falling
within the jurisdiction of the particular High Court. In this connection, he also referred to the following cases:
1) State of Rajasthan and Ors. v. Swastika Properties.
ii) Duroflex Pvt. Ltd v. R.P. Home Pvt. Ltd. (2008) 2 MLJ 954 judgement from the High Court of Judicature at Madras.
iii) Bihar State Agro Industries Development Corporation Ltd. v. Ram Chand Khosla
iv) AIR 1983 Delhi 496 Ajay Industrial Corporation v. Shiro Kanao of Ibaraki City
v) Om Prakash Srivastava v. Union of India
vi) Mayor (H.K.) Ltd. and Ors. v. Owners & Parties, Vessel M.V. Fortune Express and Ors.
Thus the learned Counsel for the respondent No. 1 submitted that in the circumstances and several case laws cited above, and in the interest of natural justice, the
hearing of the revocation petition should be fixed at the Circuit Bench at Mumbai.
The learned Counsel for the applicant submitted that there is no provision in Intellectual Property Appellate Board (Procedure) Rules, 2003 for any circuit bench
and in the absence of the same, the request should be turned down as already there is a precedent in a case before the Intellectual Property Appellate Board where
such a request for hearing in a circuit bench was refused.
In view of the foregoing submissions, we find considerable force in the submissions of the learned Counsel for the petitioner and we are inclined to accede to the
request of the petitioner. Accordingly, we direct that the main matter be listed at circuit bench at Mumbai. The miscellaneous petition stands disposed off on the
above terms.