Uniformity needed for IP disputes

By Manisha Singh and Varun Sharma, LexOrbis
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The establishment of an IP division at Delhi High Court should be followed by the creation of similar benches at other high courts, write Manisha Singh and Varun Sharma

Recently, Delhi High Court created an IP division to cater to intellectual property matters, which was etched out from the current benches of the high court. The press release and subsequent notification declaring the creation of the division carefully avoids the word “specialised”. Thus, carrying any expectation that the IP division would constitute specialised courts could lead to disappointment.

Manisha-Singh,-Partner,-LexOrbis
Manisha Singh
Partner
LexOrbis in New Delhi
Tel: +91 98111 61518
Email: manisha@lexorbis.com

Although the new IP division may not be specialised in the strict sense of the word, it does show that a need for special treatment of IP matters has already been felt. For now, the purpose behind the creation of this division is stated to be avoiding a multiplicity of proceedings, as well as the possibility of conflicting decisions concerning matters relating to the same trademarks, patents, designs, etc.

This objective is very narrow and only addresses the management of IP matters. However, what brings hope for the future is another statement in the same press release, which indicates that exclusive IP benches are also likely to be created for dealing with IP matters. However, practically, this may take some time.

The true effect of this development appears to be merely the creation of a new category of cases within commercial matters. Yet it discreetly ensures some predictability of outcomes and stability of legal requirements. This is so because the matters would be listed before a limited number of benches that form part of the IP division, and it would be ensured that all matters emanating from the same IP dispute reach the same bench. Recently, one of the major concerns of IP holders has been the conflicting decisions arising from the same dispute, and this has not only created confusion in their minds but introduced an element of uncertainty, which can also encourage forum shopping.

The creation of an IP division has been triggered by the dissolution of the Intellectual Property Appellate Board (IPAB). The IPAB was an appellate authority empowered to hear appeals arising from the decisions of the controllers and registrars appointed under the Patents Act, Trademarks Act, etc. It also had the power to revoke a patent and cancel a design, a trademark, or a copyright.

Varun Sharma
Associate partner
LexOrbis in New Delhi
Tel: +91 81785 51948
Email: varun@lexorbis.com

With the abolition of the IPAB, all the matters pending before it will be transferred to high courts, and it is expected that about 3,000 cases will be transferred to the Delhi High Court alone. Apart from the enormity of the number of cases, one concern has been the possibility of the allocation of similar IP matters before different benches, which would cause a large number of conflicting decisions. Delhi High Court anticipated this conundrum and created the IP division to instil confidence in IP holders.

The current roster of the IP division also deserves a special mention. The judges chosen to be a part of the IP division have vast experience in deciding IP matters, and have given several landmark decisions in the past that have set the direction for IP jurisprudence in India, as well as established several indomitable legal principles.

Although these judges would also hear other commercial matters, their experience and pivotal decisions in all domains of IP make them no less than specialised IP courts. Thus, the selection of specialised benches from time to time, which have a deeper understanding of IP matters and extensive experience in handling such issues, augurs well until specialised IP courts are created in India.

Delhi High Court is also framing comprehensive rules for the IP division. This would ensure uniformity in the proceedings relating to IP matters before the court, and it is hoped that in the coming weeks there will be more clarity on the functioning of the IP division. There are 25 high courts in India, but the high courts of Delhi, Mumbai, Kolkata and Chennai are the leading high courts that hear IP matters.

With the introduction of the IP division in Delhi High Court, it remains to be seen when the rest of the high courts will follow this path and form their own IP divisions. Unless all high courts have their IP divisions, Delhi High Court will become a preferred forum, and the ghost of forum shopping, which this reform aims to eradicate, will return.


Manisha Singh is the partner of LexOrbis in New Delhi. She can be contacted on +91 98111 61518 and manisha@lexorbis.com

Varun Sharma is the associate partner of LexOrbis in New Delhi. He can be contacted on +91 81785 51948 and varun@lexorbis.com

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