By Priya Adlakha and Shilpi Sinha
The Hon’ble Madras High Court in its recent decision in Galatea Ltd. v. Registrar General of Madras High Court & Ors. has directed the State Government to notify the Madras High Court Intellectual Property Rights Division Rules, 2022 with the exception of the Rule relating to court fees, within one week of receipt of the order, much to the relief of IP practitioners and litigants.
The decision came in a batch of petitions of Writ of Mandamus, under Article 226 of the Constitution of India, wherein the Petitioners inter-alia prayed that direction to be issued to the Registrar General of the High Court to consider the Petitioner’s representation dated July 28, 2022, and seeking directions against the Registrar General as well as the State Government to frame and implement appropriate Rules to transfer pending cases from the erstwhile Intellectual Property Appellate Board, Chennai (IPAB).
The Additional Advocate General of Tamil Nadu appearing for the State Government argued that under Section 129 of the Code of Civil Procedure, 1908 (CPC), the High Court is empowered to draft the relevant Rules without the need for prior approval from the government and the Registrar General can publish the Rules in the official Gazette u/s 13 of the CPC.
Regarding Rule 10 and schedule 1 of the proposed Rules regarding to court fee provisions, the Additional Advocate General of Tamil Nadu informed the Hon’ble High Court that it would take at least two months’ time for the government either to promulgate an ordinance or amend the Tamil Nadu Court Fees and Suits Valuation Act, 1955. However, the Hon’ble court noted that when the Registry forwarded the draft Rules to the government on October 27, 2022, for issuing the relevant notification, and the government had no objection to doing so, the government was required to take immediate action and notify the Rules, with the exception of the one pertaining to court fees.
The Hon’ble Court was concerned that 1094 out of the 2090 cases transferred from the IPAB are awaiting notification of the IPD Rules, and in many cases, the patent will expire. As a result, the Hon’ble court reiterated that the litigants will not suffer as a result of the Respondents’ delay.
Therefore, the Hon’ble High Court directed its Registry to collect the court fees in respect of the new filings in accordance with the draft Rules, pending amendment of the Tamil Nadu Court Fees and Suits Valuation Act, 1955, with a declaration from the petitioners to make up any difference in the amount if the collection of the court fees changed. Furthermore, with respect to the matters that are transferred from the IPAB, the Hon’ble Court directed the Registry not to collect any court fees, as the same has already been paid. A direction is also passed to the Registrar General of the High Court, to make arrangements to inaugurate the IP Divisions, once these Rules are notified.