The IP division at Delhi High Court may be a harbinger of a new era, but India would do well to look further afield for examples of best-practice IP dispute resolution, argues KS Kardam, former senior joint controller of patents and designs at the Indian Patent Office
The creation of the intellectual property division (IPD) within Delhi High Court is a significant step for efficiently handling IP matters in India.
The IPD is consistent with the government’s 2016 national IPR policy, which prioritised improving India’s IP protection and enforcement systems. The IPD also aligns with global trends for the establishment of specialised tribunals.
The dismantling of the Intellectual Property Appellate Board (IPAB) along with other appellate tribunals by way of the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, on 4 April 2021, paved the way for the IPD’s creation. In the interim, the functions of the IPAB were transferred to the appropriate high courts or commercial courts. About 3,000 pending IPAB appeal cases from IP offices, and revocation matters have been transferred to the Delhi High Court.
The court was already responsible for IP matters including lawsuits relating to: The infringement of trademarks, copyrights, and patents; writ petitions and revision petitions from IP suits in the commercial courts; and appeals of IP suits from orders and judgments of the commercial courts.
The IPAB was officially established on 15 September 2003 to provide a venue for appeals against the decisions of the registrar under the Trademarks Act, 1999, and the Geographical Indications of Goods (Registration and Protection) Act, 1999. The IPAB’s jurisdiction was later extended to patents, in 2007, authorising it to adjudicate appeals from the decisions, orders and directions made by the controller of patents under the Patents Act of 1970.
The IPD was established by the court on the recommendations of a two-member committee of judges to resolve the large influx of IP cases efficiently and expeditiously. Delhi High Court is currently formulating comprehensive rules for the newly created IPD, which will act as a specialised bench in the high court to address IP-related cases. It will be governed by the IPD Delhi High Court Rules. Original proceedings before the IPD will also be governed by the Delhi High Court (Original Side) Rules of 2018, as well as the provisions of the Civil Procedure Code (CPC) and the Commercial Courts Act of 2015.
The IPD will be responsible for matters including:
(1) all original and appellate proceedings relating to IP disputes, such as civil writ petitions, regular first appeals and first appeal orders;
(2) all-new IP filings in the various IPR categories; and
(3) IP suits, revocation applications, cancellation applications, appeals from the offices of the registrar of trademarks, controller of patents, copyright registrar, and all other proceedings under the provisions of: the Trade Marks Act of 1999; the Copyright Act of 1957; the Patents Act of 1970; the Designs Act of 2000; the Geographical Indications of Goods (Registration and Protection) Act of 1999; the Protection of Plant Varieties and Farmers’ Rights Act of 2001; and the Semiconductor Act of 2000, which were all previously maintainable before the IPAB.
KS KARDAM is the former senior joint controller of patents and designs at the Indian Patent Office. Summer Keating, an intern, in the US office of Davé Law Group, and Raj Davé, president of the firm, also assisted with the article.