The Delhi High Court (hereinafter referred to as the “High Court”), by passing office order No. 667 /Original Side/DHC dated 7th July, 2021 established the Intellectual Property Division (hereinafter referred to as “IPD”) as a special bench of the High Court which was solely dedicated to adjudicating Intellectual Property (hereinafter referred to as “IP”) matters.
The IPD has been set up as a project by the High Court, exercising powers under Section 7 of the Delhi High Court Act, 1966, Section 129 of the Code of Civil Procedure, 1908, and powers conferred under the various statues as amended by Tribunal Reforms Act, 2021.
The office order further elucidates and clarifies the types of proceedings which would now be forwarded to the IPD of the High Court:
The need for a separate division for IP was felt most after the dissolution of the IPAB and thus a committee made up of the Hon’ble Chief Justice of the High Court, Hon’ble Mr. Justice D.N. Patel, and Hon’ble Ms. Justice Pratibha M. Singh and Hon’ble Mr. Justice Sanjeev Narula was constituted for formulating recommendations for setting up of a new adjudicatory body relating to IP matters. It was this committee based on whose recommendations that the creation of the IPD was commenced.
The matters enlisted in the IPD shall be heard and decided upon by the nominated judges from the Commercial Division of the High Court.
IPAB HISTORY AND SHUTDOWN
The IPAB was established in 2003 under Section 89 of the Trademarks Act, 1999 (hereinafter referred to as “Trademarks Act”) specifically to hear appeals against the decisions of the Registrar in decisions involving the Trademarks Act, Geographical Indications of Goods (Registration and Protection) Act, 1999 (under Section 31 thereof), Patents Act, 1970 (under Section 117A thereof) and the Copyright Act, 1957 which were on the rise during the Internet boom.
By way of the 42nd Constitutional Amendment Act, 1973 Articles 323A and 323 B were added to the Constitution of India. Article 323B empowers the Government to notify the establishment of any other tribunal to specifically adjudicate matters over the subject mentioned under Art 323B (2). The country witnessed a spurt in the formation of tribunals discharging judicial and quasi-judicial functions, bringing in expertise to deal with technical matters. In the backdrop of the above, the IPAB was set up.
Although started with the right intentions, over time, the IPAB eventually got bogged down with delays and administrative laches. Judicial as well as technical members were not appointed on time, naturally the increasing number of vacancies led to a consequent increased in the pendency of matters before the IPAB.
This was causing huge financial loss to the IP proprietors as patented technologies and inventions with crores of research and development behind them could not be effectively protected, it was observed that speedy justice, which was one of the primary reasons for establishing the tribunals, was not being achieved.
Due to these problems, when the Tribunals Reforms (Rationalisation & Conditions of Service) Ordinance, 2021 was eventually passed, the IPAB was one of the Tribunals which came to be abolished.
THE NEED FOR A SEPARATE IPD
When the IPAB got abolished all the pending matters before the IPAB, close to 3000, came to be transferred to the High Court. The High Court is well-known to be the most preferred court for all kinds of technical matters which require urgent relief in view of its efficient docketing of matters as well as its one-day ex- parte injunctions.
The Supreme Court has even taken cognizance of the practice of parties employing forum shopping to prefer the Delhi HC in matters where no cause of action arrives in the Capital in the case of Performing Rights Society Ltd. v. Sanjay Dalia & Anr (CA 10643-10644 of 2010).
While there has been active effort to curb this practice it continues to persist. The primary reason for it being that IP matters are inherently technical in nature and require knowledge of not only the law but clarity on tenets of science, technology and the Internet.
The need for a special forum for dealing with IP matters becomes even more evident when considering that India is a rapidly developing nation with niche and unique advancements in science and technology. For the effective promotion and protection of such advancement, a comprehensive and special system to adjudicate over IP disputes is the need of the hour. The creation the IPD is not unique to India, this same step has been taken in countries such as UK, Japan, Malaysia, Thailand, China etc.
THE IPD RULES
The IPD Rules are notable for giving explicit recognition to traditional knowledge and its associated rights in common law and tortious actions related to privacy and publicity; matters pertaining to data exclusivity and finally matters relating to data protection vis-à-vis IPR.
The IPD Rules constitute 41 rules which delve into all the aspects of relating to the operation of the IPD. Following is a brief description of some of the important portions of the IPD Rules.
Rules 6 to 14 govern the procedure regarding the various kinds of applications such as Appeals, Original Petitions, Writ Petitions and Suits.
Rules 15 and 16 govern the procedure regarding the submission and preservation of evidence. Interestingly Rule 16 lays out procedure for the practice of hot-tubbing to be followed in accordance with Rule 6, Chapter XI, Delhi High Court (Original Side) Rules, 2018.
‘Hot-tubbing’ refers to the practice of hearing expert evidences in a new way in which expert witnesses give evidence simultaneously in each other’s presence and in front of the judge, who puts the same questions to each expert witness.
This is a much more reliable way of examining expert evidence as in such cases the experts of the opposite parties can question each other’s theories and technical observations and thus it makes sure that the Court is not swindled into believing biased or untrue technical evidence which it would otherwise have no way of examining.
Rule 17 deals with the procedure relating to the disclosure and discovery of documents including by way of interrogatives. Those parties found guilty of interfering in discovery process would be liable to heavy fines.
Rule 20 lays out an exhaustive list of factors that must be taken into consideration while determining the quantum of damages while hearing an application seeking damages/account of profits.
Rule 30 gives a special and ambiguous power to the IPD to make provisions, not inconsistent with the IPD Rules, to enable the removal of any difficulties which come in the way of enforcement of the IPD Rules.
Rule 31 empowers the IPD to constitute a panel of experts in case a matter deals with overtly technical issues of the proprietary technology or invention.
Rule 32 notably provides for the judges of the IPD to be entitled to appoint up to 2 law researchers each, for help in researching and questions relating to techno-egal aspects on a daily basis. This would help cure a long-standing defect of the IP matters adjudication process where the judges, be it of the High Courts or of the IPAB, were out of touch with the development of cutting-edge technology and discourse around scientific research.
Rule 33 directs that there would be strict guidelines of written submissions and timelines for oral submissions and empowers the IPR to direct filing of written submissions in advance, prior to the date fixed for oral arguments, and fix specific timeslots and restricted time limits for oral arguments.
Rule 37 provides that the IPD may, at any stage of the of the proceedings, direct the parties to seek mediation or Early Neutral Evaluation, where the same seems reasonable and possible to be effective.
Rule 38 provides for the mechanism of appeals and directs that appeals against orders of the IPD shall lie before the Division bench of the High Court.
Finally, Rule 40 provides that all the cases which were transferred from the IPAB to the High Court would now be directed to the IPD
This is a welcome move, the IPAB was fraught with elementary issues which not only caused expensive delays to the parties but would also result in delivering of decisions that would be untenable in law either due to a lack of conceptual understanding or the matters or due to the lack of independence.
However, the setting up of the IPD and the passing of the IPD Rules is not only for mere atonement for the issues which were attributable to the IPAB, it is also making strides in providing for contemporary developments such as Rule 36 which provides for the needs of disabled lawyers and litigants by way of mandating filings before the IPD to be in a Portable Document Format with Optical Character Recognition (OCR).
It is clear that the setting up of the IPD will provide relief to IP proprietors and lawyers, however, it remains to be seen whether the bench would be able to retain the effective disposal rate and unquestionable reasoning of its parent High Court.
– Team AMLEGALS assisted by Mr. Jason James (Intern)
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