Madras HC notifies dedicated Intellectual Property Division for hearing IP Matters

On April 5th, 2023, the Hon’ble High Court of Madras (hereinafter referred to as “the Hon’ble Court”) by way of a gazette notification announced the creation of the Intellectual Property Division (hereinafter referred to as “the IP Division”) as per the Hon’ble Court’s direction in Galatea Limited v. Registrar General[1], making it the second court in India with such a division after the Hon’ble High Court of Delhi. The Hon’ble Court also issued the Madras High Court Intellectual Property Rights Division Rules, 2022, (hereinafter referred to as “the IPRD Rules, 2022”) which will regulate the proceedings before the IP Division.

Important takeaways:

1. The IP Division will be presided over by a Single Judge Bench.

2. A Division Bench will be constituted for appeals arising under Section 13 of the Indian Commercial Courts Act.

3. The IPRD Rules, 2022 also talk about the cases transferred from Intellectual Property Appellate Board (IPAB) and state that they shall be listed and heard before the IP Division without any fresh or additional fees.

4. Acts within the purview of the IPD: the Patents Act, 1970, Trade Marks Act, 1999, the Copyright Act, 1957, the Designs Act, 2000, the Geographical Indications of Goods (Registration and Protection) Act 1999; the Protection of Plant Varieties and Farmers' Rights Act, 2001; the Semiconductor Integrated Circuits Layout- Design Act, 2000; and appeal under Section 62 of the Information Technology (IT) Act, 2000.

5. As per Rule 2(7), the Rules shall apply to IPR disputes of only civil nature:

· 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;

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

· relating to protection of trade secrets, confidential information and related cases or proceedings;

· including tortious actions related to privacy and publicity rights involving intellectual property issues;

· data exclusivity, domain names and other matters relating to data protection involving intellectual property issues, as also those arising under the Acts as defined in Rule 2(1) including appeals arising out of Sec. 62 of the Information Technology Act, 2000;

· including internet violations and any other proceeding pertaining, relating, incidental, ancillary to any of the subject matters under clauses (i) through (v) above.

· including any challenge to the order passed under Sec. 11 of the Customs Act,1962 and related notifications.

6. Criminal proceedings arising from the penal provisions under the aforementioned Acts, petitions questioning the legality of any provision of the law and any plea falling under the category of Public Interest Litigation will not be under the ambit of these Rules.

7. Cases pertaining to the Information Technology Act, 2000 dealing with the rights and liabilities of intermediaries, online marketplaces, and e-commerce platforms involving issues relating to any of the aforementioned rights, shall be deemed to be within the purview of IP Rights.

8. Rule 12 allows for evidence to be recorded through video conference by the Local Commissioner and/or videography and transcription technology or by use of any other technology.

9. Rule 13 lays down the provision for admission of Expert Evidence, either at the request of a party or at the Hon’ble Court’s own accord and if the expert evidence is not favourable to one of the parties, that party has the right to cross-examine the expert.

Following the abolishment of the IPAB in 2021, the establishment of the IP Division of the Hon’ble High Court of Madras comes as a relief against the pendency of over 2000 cases that were transferred from the IPAB to the Hon’ble Court and reassures expedited and effective disposal of such cases.

[1] W.P.Nos.4122, 4124 and 4129 of 2023