By Priya Adlakha and Shilpi Sinha
In a much anticipated and awaited development, the High Court of Delhi has issued a Public Notice dated October 10, 2021 proposing the Draft “Delhi High Court Intellectual Property Rights Division Rules, 2021”.
The Court vide the said notice had invited comments from members of the Bar.
The dissolution of the IPAB and emergence of IPD
Readers may be aware that the Intellectual Property Appellate Board (IPAB) was dissolved by the Government vide “The Tribunals Reforms Ordinance, 2021”. (Read Adios, IPAB: Government of India Officially abolishes IPAB ).
Subsequently, all cases/appeals pending before the IPAB are to be transferred to the respective High Courts (of Delhi, Bombay, Madras, Calcutta or Ahmedabad as the case may be) or Commercial Courts in copyright matters. Hence, the IP-related appeals and procedures are currently being filed with the appropriate High Courts or Commercial Courts, depending on the jurisdiction.
On July 7, 2021, the Delhi High Court, seizing the opportunity and living up to its reputation as a progressive IP savvy court, established an Intellectual Property Division (IPD) with dedicated IP benches to handle all IPR issues. (Read Delhi High Court directs Creation of Intellectual Property Division (IPD) )
Thereafter, the Delhi High Court had also notified the Nomenclatures and Court Fees for the newly created Intellectual Property Division.
The Delhi High Court has now released the said Draft Rules for matters listed before it’s IPD with respect to practice and procedure for the exercise of its original and appellate jurisdiction, and for other miscellaneous petitions arising out of specific statutes.
The IPD Delhi High Court Regulations, which is a complete new set of rules, are up for suggestions. As a result, business conflicts would also be governed by the Civil Procedure Code (CPC) and the provisions of the Commercial Courts Act, 2015 (which includes procedures designed to speed up the disposal of cases).
Pathway to New Rules
The Rules include important definitions, filing and nomenclature, procedure for appeals, original petitions, writ petitions, civil miscellaneous main Petition, pleadings, intervention, summary adjudication, general clauses, guidelines for written submissions, and timelines for oral submissions, amongst other things.
The IPD was formed based on the suggestions of a Committee chaired by Hon’ble Mr. Chief Justice DN Patel and comprised of Hon’ble Mrs. Justice Prathiba M. Singh and Justice Sanjeev Narula. The committee was formed to simplify and thoroughly evaluate how a large number of IPR matters should be handled.
Apart from initial procedures, the IPD is entrusted with hearing Writ Petitions (Civil), CMM, RFA, and FAO pertaining to Intellectual Property Rights issues (save those that must be heard by the Division Bench). In July, the Delhi High Court announced the immediate implementation of a new nomenclature for matters involving Intellectual Property Rights (IPR) Disputes.
The new nomenclature is based on the suggestions of a two-member Committee chaired by Hon’ble Mr. Chief Justice DN Patel and comprising of Hon’ble Mrs. Justice Prathiba M Singh and Hon’ble Mr. Justice Sanjeev Narula. The new terminology refers to ‘Writ Petition (C)’ as ‘Writ Petition (C)-IPD’ in accordance with the suggestions. Similarly, ‘Civil Misc. (Main)’ will include the ‘IPD’ suffix.
Delhi High Court Intellectual Property Rights Division Rules, 2021
In keeping with worldwide practice, the establishment of IPD will be a key step towards successfully resolving IPR issues. IP Divisions or IP Courts dedicated only to IPR disputes can also be found in countries such as the United Kingdom, Japan, Malaysia, Thailand, and China.
The IPD would be under the aegis of the IPD Delhi High Court Rules, which are currently being developed. The original proceedings before the IPD will also be regulated by the Delhi High Court (Original Side) Rules, 2018, as well as the rules of the CPC as they apply to commercial disputes, as well as the provisions of the Commercial Courts Act, 2015. According to the office ruling, appeals filed under Section 5C of the Cinematograph Act of 1952 shall be recorded as RFA (Regular First Appeal) till the Rules are formulated.
According to the Office order dated July 07, 2021, the IPD of the Delhi High Court will handle the following matters:
- All original and appellate proceedings, including Writ Petitions (Civil), Civil Misc. (Major), RFA, and FAO, relating to IPR disputes, except those that are to be heard by a Division Bench.
- The IPD would also handle all new filings under the different IPR categories.
- IPR suits, revocation applications, cancellation applications, other original proceedings, appeals from the offices of the Registrar of Trade Marks, Controller of Patents, and Copyright Registrar, and all other proceedings previously maintainable before the IPAB under the provisions of the Trade Marks Act, 1999; the Copyright Act, 1957; the Patents Act, 1970; the Designs Act, 2000; the Geographical Indications of Goods (Registration and Protection) Act, 1999; the Geographical Indications of Good.
With effect from July 08, 2021, the Roster of Sitting Judges of the Delhi High Court was amended to include Hon’ble Mr. Justice Suresh Kumar Kait, Hon’ble Mr. Justice Jayant Nath, Hon’ble Ms. Justice Anu Malhotra, Hon’ble Mr. Justice C. Hari Shankar, and Hon’ble Mr. Justice Sanjeev Narula as ‘IP Division’ nominees.
The Hon’ble Delhi High Court’s Intellectual Property Division will be responsible for considering and adjudicating all issues relating to Intellectual Property Rights. Included in this will be the following:
- Proceedings in the original and appellate courts;
- Petitions for Writs (civil);
- First Appeals on a Regular Basis (RFA); First Appellate Appeal from an Order (FAO);
- All new IPR filings in all categories;
- Suits based on intellectual property rights;
- Applications for Revocation;
- Applications for cancellations;
- Or any other appeals from the Trademark Registrar’s, Patent Controller’s, or Copyright Registrar’s offices;
- All additional proceedings that may be brought before the former IPAB pursuant to the Trademarks, Copyrights, Patents, and Designs Act.
With the IPAB no longer in existence, the cases will be transferred to the various High Courts in Delhi, Bombay, Calcutta, and Madras depending upon their jurisdictions.
The aforesaid scenario has consequently resulted in the establishment of an Intellectual Property Division at the Delhi High Court via an Office Order dated July 7th. The IP Division is constituted of Five Judges from the Delhi High Court’s Original Side.
Things to keep in mind are:
- The number of Judges are the same as those of Commercial Courts, which is five;
- The Hon’ble Judges while dealing with IPR cases shall continue to hear all cases, including those involving property, arbitration, and contractual disputes.
- The Judges’ roster will be changed on a regular basis, perhaps every six months to a year. As a result, there is no continuity beyond the term of a typical roster.
The creation of an exclusive division for Intellectual Property is a clear acknowledgement of the importance and value of intellectual property (IP) in our Economy in the recent times. As the creation of IP Division is still at its nascent stage, it is too early to deliberate on its impact on IP. The goal is that in the long run, the IP division will provide the additional certainty of fair and timely disposal of IP cases, thereby strengthening the trust of IP holders in the system and administration of IP cases in India.
The deadline to submit comments/ suggestions to the Draft IPD Rules ended on November 10, 2021.