By Lucy Rana and Tanvi Bhatnagar
The Hon’ble Delhi High Court on the recommendation of a specially constituted committee had issued a press release on July 06, 2021 wherein the directive for creation of an Intellectual Property Division (IPD) of the Court was announced, inter alia to avoid multiplicity of proceedings and conflicting decisions in the fields of intellectual property. Read more here to know about delhi high court creation intellectual property division ipd regarding the formation of the IPD.
Pertinently, the said press release also provided for the following:
- That the Hon’ble Delhi High Court is in the process of framing comprehensive Rules for the newly created Intellectual Property Division;
- That Exclusive Benches for the Intellectual Property Division will be created and notified from time to time; and
- That an Office Order will be published to bring clarity with respect to nomenclatures to be given to petitions before the Intellectual Property Division and payment of applicable court fees.
Delhi High Court’s Office Order- July 7, 2021
In furtherance of the aforesaid press release, the High Court, on the basis of the recommendations of the Committee comprising of Hon’ble Ms. Justice Pratibha M. Singh and Hon’ble Mr. Justice Sanjeev Narula, has now published an office order dated July 07, 2021[1], wherein directions have been passed with respect to the newly created Intellectual Property Division.
The directions passed vide the office order are as follows:
TYPES OF MATTERS TO BE DEALT WITH BY IPD
The Intellectual Property Division of the Hon’ble Delhi High Court will be handling and adjudicating upon all the matters related to Intellectual Property Rights. This will include the following:
- Original and Appellate proceedings;
- Writ Petitions (civil);
- Regular First Appeals (RFA);
- First Appeal from Order (FAO);
- All Fresh filings in all the IPR categories;
- IPR suits;
- Revocation Applications;
- Cancellations applications;
- Or any other appeals from the office of Registrar of Trademarks, Controller of Patents, Copyright Registrar;
- All other proceedings which were maintainable before the erstwhile IPAB under the Trademarks, Copyrights, Patents and Designs Act.
This Division however will not be dealing with matters that are to be dealt with by a Division Bench.
APPLICABLE RULES/STATUTES UPON THE IPD
The Intellectual Property Division will be governed by IPD Delhi High Courts Rules which are under the process of being framed at the moment. In addition to the new rules, the original proceedings before the Division will also be governed by Delhi High Court (Original side) Rules, 2018, Code of Civil Procedure, 1908 and the Commercial Courts Act, 2015.
BENCHES BEFORE WHICH IPR CASES WILL BE LISTED
The Hon’ble Chief Justice will notify the Intellectual Property Benches from time to time. There has been no further update regarding this aspect.
NOMENCLATURES AND APPLICABLE COURT FEES
The Hon’ble High Court has also issued a separate Annexure regarding the same,
(which can be accessed at https://delhihighcourt.nic.in/writereaddata/Upload/PublicNotices/PublicNotice_4W1UGE3WNT9.PDF) along with the said Office Order, which clarifies the nomenclature of the cases to be filed before the Division and the applicable court fees. For Trademarks, Copyrights and Patents, the following nomenclature and court fees will be applicable:
| S.NO | ACT | SECTION UNDER WHICH FILED | NATURE OF PROCEEDING | NOMENCLATURE IN HIGH COURT | JURSIDICTION AS PER ORDINANCE | JURISDICTION IN HIGH COURT | PAYABLE COURT FEES |
| 1 | Trademarks | 47. Removal from Register and imposition of limitations on ground of non-use. | Original
(As per Sec. 47(i) can be filed before Registrar of Trademarks as well as High Court having concurrent jurisdiction) |
C.O. (Comm. IPD-TM) | “Registrar of Trade Marks” or the “High Court” | IP Division (Original Side) | Rs. 525 for the time being |
| 2 | Trademarks | 57. Power to Cancel or vary registration and to rectify the register. | Original
(As per Sec. 57(2) can be filed before Registrar as well as High Court having concurrent jurisdiction) |
C.O. (Comm. IPD-TM) | “Registrar of Trade Marks” or the “High Court” | IP Division | Rs. 525 for the time being |
| 3 | Trademarks | 91. Appeal to the Appellate Board (now HC). | Appellate (against the order passed by the Registrar and since u/s 47 & 57 Registrar and HC have concurrent jurisdiction | C.A. (Comm. IPD-TM) | “High Court” | IP Division | Rs. 525 for the time being |
| 4. | Trademarks | 125. Application to the Appellate Board for rectification questioning validity of the registration. In fact the application is directly filed before the Tribunal (now High Court) and not before the Registrar. | Original
(Sec. 125 specifically provides for presentation before the IPAB (now HC) and bars it before the Registrar and since u/s 47 & 57 Registrar and HC have concurrent jurisdiction) |
C.O. (Comm. IPD-TM) | “High Court” | IP Division | Rs. 525 for the time being |
| 5. | Copyrights | 19A, 23,31,31A,31B, 31C,31-D, 32 and 33A.
Statutory licence for broadcasting of literary and musical works and sound recording etc. |
Original (proceedings are originally filed before the IPAB (Now HQ and not before the Registrar as per Section 31-D(3) | C.O. (Comm. IPD-CR) | “Commercial Court”
(As per Sec. 2(fa) Commercial Court means a Commercial Court or the Commercial Division of a High Court. |
IP Division for time being till further orders | Rs. 525 for the time being |
| 6. | Copyrights | 50. Rectification of Register by Appellate Board/IPAB (Now HC) | Original
(The application is originally filed by the Registrar or any aggrieved person before the IPAB (Now HQ and not before the Registrar as per Section 31- D(3) |
C.O. (Comm. IPD-CR) | ‘High Court’ | IP Division | Rs. 525 for the time being |
| 7. | Copyrights | 72. Appeal against orders of Registrar of Copyrights | Appellate | CA (Comm. IPD-CR) | “High Court” | IP Division | Rs. 525 for the time being |
| 8. | Patents | 64. Revocation of Patents by the Appellate Board/IPAB (Now HC) | Original
(The application is originally fled before the IPAB (Now HQ and not before the Controller) |
C.O.(Comm. IPD-PAT) | “High Court” | IP Division | Rs. 525 for the time being |
| 9. | Patents | 71. Rectification of Register by Appellate Board/IPAB (Now HC | Original
|
C.O.(Comm. IPD-PAT) | “High Court” | IP Division | Rs. 525 for the time being |
| 10. | Patents | 117-A. Appeals to the Appellate Board from the order of the Controller or Central Government. | Appellate | C.A.(Comm. IPD-PAT) | “High Court” | IP Division | Rs. 525 for the time being |
CINEMATOGRAPH ACT, 1952
Appeals under Section 5C of the Cinematograph Act, 1952, until framing of Rules in this regard, will be registered as RFA (Regular First Appeal).
OTHER STATUES
Cases under other statutes viz. Customs Act, 1962, The Airports Authority of Indi Act, 1994, National Highways (Land and Traffic) Act, 2002, shall be registered as Writ Petitions (Civil) and shall be listed before the Single Judge or Division Bench, as per the amendments pursuant to said Ordinance.
The office order further directs that these directions are brought into force with immediate effect.
The present office order brings in much needed clarity with respect to how intellectual property rights matters will be filed and governed in future. The Hon’ble Delhi High Court is devoted to establish the IPD at the earliest in order to safeguard the rights of the stake holders. We are certain that the IPD Delhi High Court Rules with respect to functioning and management of the IPD will be released shortly and made available to stakeholders for comments and inputs.
[1] https://delhihighcourt.nic.in/writereaddata/Upload/PublicNotices/PublicNotice_4W1UGE3WNT9.PDF