Intellectual Property Division of the Delhi High Court: The way forward

The Delhi High Court is credited with many firsts. The latest in its list is the setting up of the Intellectual Property Division (IPD). As the name suggests, it is a specified division of the original side of the Court to exclusively deal with matters arising out of intellectual property rights (IPR).

The Delhi High Court has been recognized as one of the premier commercial courts of the country; more than 60% of intellectual property disputes are instituted in this Court. The High Court has rendered pathbreaking judgments and has contributed to the jurisprudence of trademarks and patents. It is a matter of common knowledge that many companies have shifted their registered offices to Delhi with the sole intent of falling within the territorial jurisdiction of the Delhi High Court.

The author would advert to this phenomenon in some more detail later. Here, with some digression, it is intended to discuss another aspect, which has some bearing on the subject matter being dealt with in this article.

The reference here is to the ‘tribunalisation of justice,’ by which special tribunals are created, outside the ordinary/normal judicial hierarchy, to deal with certain kinds of disputes. This phenomenon is not confined to India alone, but can be witnessed across jurisdictions. There may be various reasons for the creation of administrative tribunals. It may be due to the reason that the courts are overburdened with cases or for the reason that to deal with certain types of cases, special skills are needed.

In order to achieve this objective, the Constitution (Forty Second Amendment) Act, 1976 incorporated Chapter XIV A into the Constitution of India and inserted Article 323A and Article 323B with the objective

"To reduce the mounting arrears in High Courts and to secure the speedy disposal of service matters, revenue matters and certain other matters of special importance in the context of the socio-economic development and progress, it is considered expedient to provide for administrative and other tribunals for dealing with such matters while preserving the jurisdiction of the Supreme Court in regard to such matters under Article 136 of the Constitution.…"

With the introduction of Articles 323A and 323B, the country witnessed a spurt in the formation of tribunals discharging judicial and quasi-judicial functions, bringing in expertise to deal with technical matters. It led to the setting up of the Intellectual Property Appellate Board (established by virtue of Section 83 of the Trade Marks Act 1999) to hear appeals against the Registrar’s decisions under the Trade Marks Act, 1999 (under Section 91 thereof), the 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.

However, over time, with the increasing number of vacancies in the tribunals and consequent increase in pendency of matters, it was observed that speedy justice, which was one of the primary reasons for establishing the tribunals, was not being achieved. The efficacy of such tribunals has also come under attack.

In this context, another important question which assumes significance is the efficacy of the courts in dealing with specialised matters, at least concerning those subjects which still fall under their jurisdiction, by creating specialised benches. It not only ensures adequate attention which is required to be given to such matters for their speedy disposal, but also ensures deft handling with desired expertise, which is needed for handling such subjects. The setting up of such specialised benches, therefore, becomes a facet of judicial reforms. More than that, in this era of globalisation, where disputes between parties have cross-border ramifications and an efficient justice system has a direct co-relation to Foreign Direct Investment (FDI) and ‘ease of doing business’, creation of specialised benches within the court system assumes paramount importance.

With the promulgation of the Tribunals Reforms (Rationalisation & Conditions of Service) Ordinance, 2021 and the eventual passing of the Tribunal Reforms Act, 2021, various tribunals have been abolished. The IPAB was one among these.

The Tribunal Reforms Act amended certain acts - The Cinematograph Act, 1952; the Copyright Act, 1957; the Customs Act, 1962; the Airports Authority of India Act, 1994; the Trade Marks Act, 1999 and the Protection of Plant Varieties and Farmers' Rights Act, 2001, among others - and transferred the functions of such tribunals to the High Court and the principal civil court of original jurisdiction in a district where the context so requires under the Control of National Highways (Land and Traffic) Act, 2002.

The Tribunal Reforms Act laid the foundation for setting up of the IPD. The concept of specialized benches, as discussed above, is not alien to the Delhi High Court. More than a decade ago, the Court constituted two benches to deal exclusively with arbitration issues. The experiment was successful and was widely accepted as a visionary step, which paved way for reforms in arbitration disputes. A message was sent to the international community that India was striving to become arbitration-friendly. The contribution of the Delhi High Court in this direction has been phenomenal. Presumably, the success of the benches specifically dealing with arbitration matters and the promulgation of the Ordinance and eventually passing of the Tribunal Reforms Act, 2021 is the reason which gave the impetus to the Court to have a specialized division for dealing with cases pertaining to IPR as well.

Thus, the decision to create the IPD for the Delhi High Court, taken by the then Chief Justice on July 7, 2021, is another visionary step which is definitely going to bring desired reforms in the arena of IPR disputes.

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.

In furtherance thereof, a draft of the proposed Delhi High Court Intellectual Property Rights Division Rules, 2021 were published. After receiving comments and suggestions, the High Court issued a public notice dated December 10, 2021 containing the finalized rules of procedure for its IPD and The Delhi High Court Intellectual Property Rights Division Rules, 2022 came to be notified in the Official Gazette on February 24, 2022 along with High Court of Delhi Rules Governing Patent Suits, 2022. The Rules are applicable to all IPR suits, cases, proceedings or disputes before the IPD of the Delhi High Court

The Rules define Intellectual Property Rights to mean:

"i. Rights pertaining to Patents, Copyrights, Trademarks, Geographical Indications, Plant Varieties, Designs, Semiconductor integrated circuit layout-designs, Traditional Knowledge and all rights under common law, if any, associated therewith;

ii. Matters relating to passing off, acts of unfair competition, disparagement, comparative advertising etc.;

iii. Protection of trade secrets, breach of confidential information and related subject matters;

iv. Tortious actions involving intellectual property, privacy and publicity rights;

v. Matters pertaining to data exclusivity, domain names and other matters related to data protection, involving intellectual property issues, as also those arising under the Acts as defined in Rule 2(a);

vi. Matters involving internet violations relating to any of the subject matters under clauses (i) through (v) above related matters."

It is pertinent to note that cases pertaining to the Information Technology Act, 2000 dealing with rights and liabilities of intermediaries, online market places and e-commerce platforms involving issues relating to any of the aforementioned rights have also been included within the purview of IPR and are consequently within the jurisdiction of the IPD. Thus, with the increase in online transactions and consequent increase in disputes related therewith, the IPD is the appropriate Court for dealing with such issues also.

The Rules define the Acts dealt with by the Rules to mean The Copyright Act, 1957, The Designs Act, 2000, The Geographical Indications of Goods (Registration and Protection) Act, 1999, The Patents Act, 1970, The Protection of Plant Varieties and Farmers' Rights Act, 2001, The Semiconductor Integrated Circuits Layout- Design Act 2000, The Trade Marks Act, 1999, The Information Technology Act, 2000. Hence, as is apparent, the Rules not only consolidate the matters pertaining to intellectual property rights that were brought within the jurisdiction of the High Court by virtue of the Tribunal Reforms Act, 2021, but have gone a step further and added certain other statutes also, disputes relating to which will be heard only by the IPD.

The Rules further define “IPR subject matters or cases or proceedings or disputes” to include all original proceedings, appellate and other proceedings related to IPR as defined above filed before the IPD. It shall also include IPR suits, revocation applications, cancellation applications, other original proceedings, appeals and petitions from the various IPOs and all other proceedings which were hitherto maintainable before the IPAB under provisions of the Act(s) etc. [Rule 2 (l)]

Further, even Writ Petitions (Civil), Civil Misc. (Mains), Regular First Appeal, First Appeal from Order, Civil Revision Petition arising out of IPR subject matters and disputes dealt with by the commercial courts in Delhi, except those matters that are to be dealt with by a Division Bench, have also been defined to be IPR subject matters.

Prior to the creation of the IPD, the appeals emanating from orders passed by the district courts in matters pertaining to IPR were heard by the regular roster bench hearing such appeals. But with the advent of the IPD, the appeals and other proceedings relating to IPR will also now be listed before the IPD. Therefore, with all matters pertaining to IPR being concentrated before the IPD, the potential for contribution to the growth of IPR jurisprudence is immense.

In line with the Tribunal Reforms Act, 2021, all pending proceedings before the IPAB relating to the Delhi jurisdiction, which are transferred to the Delhi High Court, are also included in the definition of IPR subject matters.

Another important step in this direction is that the Rules, keeping in view technological advancements, also permit the Court to direct recording of evidence inter-alia through video conferencing, use of videography, transcription technology or any other form of recording evidence. This is a vital step towards normalizing the use of technology to record evidence, which otherwise can lead to an inordinate delay in disposal of cases, as recording evidence is a time-consuming affair that can often take years to complete due to infrastructural issues.

Further, with the advent of globalization, witnesses in IPR disputes tend to be located at different places. Thus, recording of evidence through video conferencing will ease the burden on the witnesses, who otherwise are required to travel to Delhi each time for recording evidence.

In another first, the judges of the IPD will be entitled to appoint two law researchers who would assist them in techno-legal aspects in addition to the law researchers appointed under the Delhi High Court Rules. The law researchers may possess a degree in any technical field or specialization in any IPR subject matter or can have experience in the field of intellectual property, thereby rendering specialized assistance to the judges of the IPD.

It is interesting to note that the Rules allow a trademark or patent agent as also any professional academician having knowledge of the subject matter of the dispute to address the Court along with a counsel/legal practitioner in order to assist the IPD.

The Rules also empower the Court to fix specific time slots and restricted time limits for oral arguments, in line with recent observations of the Supreme Court calling for short, succinct arguments from lawyers. Detailed procedures to be followed in each type of matter have been prescribed in the Rules.

In view of the above, the creation of a dedicated IPD will facilitate speedy justice in cases relating to IPR and enable effective adjudication of IPR disputes, which in certain cases have a limited validity period and any delay in resolution of such disputes tend to render the dispute infructuous. The creation of the IPD, apart from ensuring speedy disposal of cases, will boost investor confidence as enforcement of contracts is one of the important indicators in the Ease of Doing Business Index. Inordinate delays in resolution of commercial disputes adversely affect the confidence of global investors to invest in India and the creation of the IPD is a giant step in the right direction to attract investment in the country and dispel the somewhat harsh impression about delay in adjudication of disputes in the country.

In this era of specialization, the role of experts dealing with disputes within their domain, which lead to the formation of tribunals, is now being completed within the courts and the arbitration benches, and now the IPD, are a precursor of things to come. With the general public reposing more faith in the courts than in tribunals, such specialization within the courts is being welcomed by all stakeholders.

The Delhi High Court was already one of the leading and preferred courts for resolution of disputes pertaining to IPR and the creation of the IPD is another step to further cement such a status.

Saket Sikri is a dispute resolution lawyer who regularly appears before the Supreme Court of India, High Court of Delhi and various other courts and tribunals.