By Lucy Rana and Tanvi Bhatnagar
The legal fraternity of India had recently bid adieu to one of its most IP savvy judicial forums, namely the IPAB (Intellectual Property Appellate Tribunal). Tribunals such as the IPAB were dissolved by the Government vide The Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021, issued by the Ministry of Law and Justice, which was recently notified in the official gazette.
As noted in our earlier article/update on the subject matter, all proceedings which were pending with the IPAB shall be transferred to the Court before which it would have been filed had this Ordinance been in force on the date of filing of such appeal or application. Thus, the functions of the IPAB have been transferred to the appropriate High Courts.
The dissolution of the IPAB, which was specifically constituted to deal with IP cases, led to very pertinent questions regarding the fate of the pending cases with the IPAB and raised the question regarding whether the respective High Courts would be able to expeditiously and efficiently resolve such IP cases, considering that pendency of a large number of cases from the IPAB would now fall on their already burdened shoulders. The Hon’ble Delhi High Court recently dealt with these specific issues and provide a way forward to allay such valid fears and concerns.
INTELLECTUAL PROPERTY DIVISION (IPD) OF DELHI HIGH COURT
On July 06, 2021, the Hon’ble Delhi High Court had issued a press release, inter alia announcing their directive to create an Intellectual Property Division (IPD) in the Delhi High Court for the purpose of avoiding multiplicity of proceedings and to avoid possibility of conflicting decisions with respect to same trademarks, patents, designs, etc.
The said Intellectual Property Division, besides dealing with the original side matters, shall also deal with the Writ Petitions (Civil), CMM, RFA, FAO relating to Intellectual Property Rights disputes, except those cases which are to be dealt by the Division Bench of this Hon’ble Court (under the Commercial Courts Act).
Background about the Delhi High Court’s IPD
The Hon’ble Chief Justice of the Delhi High Court, Mr. D.N. Patel, with the intention to streamline and comprehensively review the manner in which matters related to IPR shall be properly and effectively handled by this High Court, constituted a committee comprising of Hon’ble Ms. Justice Pratibha M. Singh and Hon’ble Mr. Justice Sanjeev Narula, who submitted their report to the Hon’ble Chief Justice.
On the basis of the recommendations of the said committee, the Hon’ble Delhi High Court had directed the creation of an Intellectual Property Division (IPD) in the Delhi High Court.
Pendency of IP cases with IPAB
Until now, there was no publically available information regarding the number and status of cases being transferred from the IPAB to each High Court. The Delhi High Court’s press release dated July 06 revealed that there are approximately 3000 cases, which have been transferred from the erstwhile IPAB to the Hon’ble Delhi High Court.
The Delhi High Court, being a court of original civil jurisdiction, is already seized of various IPR matters such as civil suits for infringement of trade marks, copyright, patents, designs, writ petitions, revision petitions and appeals.
Concerns of Stakeholders
Some of the valid concerns of all stakeholders were (i) the hearing of rectification petitions being transferred from the IPAB and the pending infringement suits by two different single benches; and (ii) manner in which the rectification petitions will now be filed under the Trade Marks Act i.e. a composite suit seeking injunction and rectification or a rectification petition in the High Court followed by an infringement suit in the High Court or a District Court.
The Hon’ble Delhi High Court is in the process of framing comprehensive rules for the Intellectual Property Division. Further, the exclusive benches for the Division will be created and notified from time to time. An office order will be issued soon to bring clarity with respect to nomenclatures to be given to such petitions and payment of applicable court fees.
It is hoped that the coming weeks would bring more clarity regarding the issues involved.
Such Intellectual Property Divisions of Courts, which primarily deal with only IP disputes, is not a novel concept and they in fact exist in various jurisdictions, such as UK, Japan, Malaysia, Thailand, China, etc. However no such Division has ever existed in India, and thus are unchartered waters for the High Courts of India. Thus, the creation of such an Intellectual Property Division which exclusively deals with all kinds of IP disputes, is a crucial step for the Hon’ble Delhi High Court and a step which is in line with global practices followed in this regard.
We hope that such Intellectual Property Divisions (IPDs) are constituted by other High Courts, for expeditious and effective disposal of all matters relating to Intellectual Property Rights.