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Bombay High Court Orders ‘Urgent’ Ex-Parte Ad-Interim Applications in IP Matters to be Held in Chambers (Now Revoked)


As per a notice dated November 6, 2019, the Bombay High Court had directed that all urgent mentioning for ex-parte ad-interim applications in IP matters will be held in the chambers of the judge, from November 7, 2019. As per the notice, the matters allowed to be circulated after the in chamber hearing, will be placed on the ‘production list’, which will be heart at 11:00 am on the assigned date. This procedure had been adopted on the directions of Mr. Justice SJ Kathawala, who at the time held the IP portfolio in the Bombay High Court’s roster or ‘sitting list’. The notice was valid until November 11, 2019, when there was a change in the sitting list and the IP matters were reallocated to Mr. Justice Gupte.

For those unfamiliar with the Bombay High Court’s procedural terminology, this notice meant that in cases where a petitioner is seeking ‘urgent’ ex-parte ad-interim relief in any matter classified as an IP matter, they will make a ‘mentioning’ in the chambers of the judge (and not in open court), at 10:30 am. If the party convinces the judge of the urgency of the matter, the application for ad-interim relief will be taken up for hearing at 11:00 am. However, that the matter is taken up for hearing will not be made known to the public or to the defendants. Matters taken up for production are as a rule published prior to the hearing, in order to allow the defendants to be present and to state their case before an adverse order is passed against them.

The reasons for such a direction are not listed on the notice itself. As per a Mumbai Mirror report, the notice is meant to serve the purpose of ‘maintaining secrecy’ and ostensibly to discourage the defendants to oppose a petition made against them. As per the report, providing notice to defendants prior to seeking relief against them ‘frustrates the purpose of applications’ and enables defendants to dispose of infringing material prior to any adverse order being passed.

The explicit endorsement of ex parte hearings and relief by the Bombay High Court stands contrary to accepted principles of civil procedure, as well as guidelines on ex parte injunctions which have been issued by the Supreme Court as well as other High Courts. As noted in the Mirror article, this is particularly glaring in contrast to the position adopted by the Delhi High Court which in May, 2019, came down on the practice of ‘defendant masking’ adopted by plaintiffs, where plaintiffs were filing cases without naming the primary defendant as the first defendant, in order to prevent defendants from taking note and making an appearance for stating their case.

We have time and again highlighted on this blog the problematic nature of ex parte ad interim injunctions, particularly in complex IP disputes, and given that injunctions once obtained can be difficult to vacate, often taking years for the same. Under the Code of Civil Procedure, ex parte hearings proceedings are an exception only in cases where a validly served summons to the defendant is not complied with. In fact, non-service of summons is a ground for the vacation of an ex parte ad-interim order passed against a defendant under O. IX R. 13. According to the Supreme Court, ex parte injunctions should only be granted in exceptional cases, taking into consideration factors including:

‘(a) whether irreparable or serious mischief will ensue to the plaintiff.

(b) whether the refusal of ex parte injunction would involve greater injustice than the grant of it would involve;

(c) the court will also consider the time at which the plaintiff first had notice of the act complained so that the making of improper order against a party in his absence is prevented;

(d) the court will consider whether the plaintiff had acquiesced for sometime and in such circumstances it will not grant ex parte injunction;

(e) the court would expect a party applying for ex parte injunction to show utmost good faith in making the application;

(f) even if granted, the ex parte injunction would be for a limited period of time.

(g) General principles like prima facie case, balance of convenience and irreparable loss would also be considered by the court.’

The procedure adopted (which thankfully now stands revoked) by the Bombay High Court seems to presume the validity of the plaintiff’s case without hearing the other side. If, as reports suggest, the procedure was adopted to prevent destruction of evidence by unscrupulous defendants, there exist separate and appropriate civil and criminal remedies for preventing the same, which do not amount to an adverse presumption against the defendant’s prior to a hearing and are not contrary to the defendant’s right to a hearing and the public interest in open court proceedings.

 

 

 

 

7 comments.

  1. Avatarakriti

    Hey nice post! But can you please advise where can i see the notice regarding revocation? Can you please share the link with me?

    Reply
    1. AvatarDivij Joshi Post author

      Hi,

      Thank you. There is no specific revocation notice AFAIK. Since the sitting list changed and the direction was for chamber hearings before Mr Justice Kathawalla, advocates practicing in Bombay HC have reported that the notice has lapsed.

      Reply
  2. AvatarSahil

    Mr. Joshi, I must express that I strongly disagree with your interpretation of the said notice. The notice is explicit and unambiguous when it states that only MENTIONINGS will be taken in the Hon’ble Judge’s chambers. The HEARING of the ex-parte ad-interim application will still be done in open Court.

    Permitting mentionings to be done in the Judge’s chambers does not mean that due process will not be followed. It appears from the said endorsement that the judge only endeavoured to prevent an ex-parte application from being frustrated, even before it is heard and the Court arrives at a conclusion whether the relief should be granted ex-parte or notice should be issued to the Defendant.

    Any IPR practitioner would observe that a Defendant who appears after grant of such relief against it, can immediately move an application for vacating the order. It is settled law that an application for vacating ex-parte ad-interim relief must be heard expeditiously. The fact that the Indian Judiciary is overburdened cannot be denied. However, that cannot be a ground to deny ex-parte reliefs when the facts of the matter necessitate the same. There is no quarrel with the principles set out by the Supreme Court. However, you must understand that the Court would grant a Plaintiff ex-parte ad-interim relief only after it is satisfied that the Plaintiff has made out a case for it. Ex-parte reliefs are granted only where the Court is satisfied that giving notice would defeat the reliefs sought in the Plaintiff’s application.
    The Court does not presume the guilt of the Defendant when a matter is mentioned before it. Ironically, it is your argument that proceeds on the footing that innocent parties keep continuous watch on the Court’s causelist to appear in the matters filed against them. It is easy to suggest that there are other options out there than to grant ex-parte ad-interim reliefs, without providing a practical solution to it.

    There is a growing trend amongst defendants especially those dealing in counterfeit products, to direct their advocates and other representatives to keep a watch on the Court’s causelist. To make matters worse, there are advocates who remain present during the mentionings before the Court only to contact the Defendants and ask for instruction to appear on their behalf. What is so appalling about this activity is that more often than not, these advocates have no connection with the Defendants and are only looking to make an extra buck or two.

    It does not take much to realise that the uninvited appearance of the Defendants in such ex-parte applications is met with strong objections. The entire ordeal causes a tremendous waste of judicial time.

    Reply
    1. AvatarDivij Joshi Post author

      Thank you for your comment.

      If the mentioning serves the purpose of intimating the court of the urgency of an application, then it should, in principle, be held in open court.

      The purpose of ex parte interim injunctions under O39 R3 is to ensure that relief is not frustrated by delay, which may be caused if the procedural requirements of notice are to be fulfilled. O39 R3 and its proviso specifically note the conditions under which ex parte injunctions may be granted, which includes providing notice to the party immediately after the injunction (which is a mandatory provision as held by the SC).

      While I understand the difficulty of some defendants destroying evidence, if defendant’s anticipate adverse action being taken against them, they are well within their rights to be aware of potential court proceedings (and in fact it is the duty of the plaintiff to serve such notice even in production cases), and I do not see why this would be limited to IP cases and not other claims. There are also multiple remedies (civil and criminal) to deal with destruction of evidence, (including counterfeiting raids involving the police) so I do not see why an exception should be made in IP cases, particularly given the evidence (https://spicyip.com/2015/05/guest-post-interrogating-interim-injunctions-the-curious-case-of-standards-for-ex-partes.html) that interim and ad-interim injunctions appear to extend for long periods in matters of substantial public interest including pharma patents.

      Reply
  3. AvatarAdv Gautam Panchal of Gautam & Co

    The harsh truth is that occurrences of Defendants appearing for ex-parte applications without receiving notice are only increasing. Either they keep watch on the Court’s cause list (which is easily available online) or, in some cases, their advocates who are present during mentionings keep a check on applications being filed against them. In my opinion, I do not see why an innocent defendant would be keeping a watch on the Court’s cause list.

    Furthermore, there are third party advocates who do not otherwise have any nexus with the Defendant or the Plaintiff, after hearing the Plaintiff’s advocates mentioning the matter, they contact the Defendants and seek instructions to appear on their behalf. It believe it is to curb this menace that the Court may have released this endorsement.

    My firm regularly represents parties in such IPR proceedings. It is our experience, that the Court does not grant ex-parte ad-interim reliefs just for asking. These matters where ex-parte ad-interim reliefs are granted predominantly involve Defendants who are blatantly and slavishly infringing the Plaintiff’s intellectual property rights.

    It appears to us that the Court only intended to prevent Defendants from frustrating the Plaintiff’s application for ex-parte reliefs. The Delhi High Court is facing a scourge of such Defendants who appear during the hearing of the ex-parte ad-interim application, making it quite difficult for Plaintiff’s to obtain necessary reliefs.

    Reply
    1. AvatarDivij Joshi Post author

      “In my opinion, I do not see why an innocent defendant would be keeping a watch on the Court’s cause list.”

      From my very brief experience in Bombay HC, I have also observed that a close watch on proceedings is kept in impending suits where, for eg. commercial settlements are not reached. It is hardly telling of a defendant’s guilt if they anticipate action and wish to be ready to present their case.

      I agree that court’s should not pass ex parte relief for the asking, and that reasons should be recorded and presented. In our experience researching on this blog, we have noted that in a majority of cases this is not followed, ex parte ad-interim orders are rarely reasoned.

      “It appears to us that the Court only intended to prevent Defendants from frustrating the Plaintiff’s application for ex-parte reliefs.”

      This is a valid concern, but I do not think adopting a procedure where the other side is deliberately not heard and is forced to seek a vacation of an adverse order is necessary, as I have pointed out in the comment above.

      Reply
  4. AvatarRamesh Gajria

    I fail to understand why anyone can have any objection to the matter being mentioned before the Judge in Chambers. I also fail to understand what you mean when you say that this is “explicit endorsement of ex parte hearings and relief by the Bombay High Court” and that this is “contrary to accepted principles of civil procedure, as well as guidelines on ex parte injunctions which have been issued by the Supreme Court as well as other High Courts”. How has the Judge endorsed the ex party hearing or relief or acted contrary to the CPC by directing that the mentioning be made in Chambers and not in court? It is merely mentioning a matter which is to be placed on the board for ex-parte ad-interim relief and not a hearing. The Judge does not decide anything at that stage.
    I appreciate the concern of many Plaintiffs where some Attorney appears at the time of hearing of the ex-parte ad interim application, many a times even without any instructions from the Defendant, not knowing what the matter is about. Do such Advocates even have a Vakalatnama to appear in court at such a stage?
    If a Defendant is anticipating a suit being filed against him, should he not file a Caveat to prevent any ex-parte order being passed rather than tell an advocate to keep a watch?
    I agree that granting of ex parte ad interim order is to ensure that delay does not frustrate the relief. But in IP matters it is very essential to prevent the Defendant from surreptitiously disposing off or spiriting away the infringing goods. If there is no evidence available what steps can the Plaintiff take?
    As regards your statement that your research indicates that courts do not pass reasoned orders while passing ex-parte ad-interim orders, I beg to disagree. Firstly, it is a practice in the Bombay HC not to upload ex-parte ad-interim orders. I have in my long practice in the Bombay High Court never come across any such order passed without giving any reasons. In fact, in my experience all ex-parte ad-interim orders are well reasoned and detailed. If you wish I could send you umpteen such orders passed by Justice S.J. Kathjawalla of the Bombay HC in his last tenure as IP Judge or even other judges who used to hear IP matters. All ex parte ad interim orders clearly provide that the Defendant may apply for vacating the order by giving 48 hours notice to the Plaintiff.
    You are mistaken that this notice is to deliberately prevent the other side from being heard. All ex-parte ad-interim hearings are held in open court.
    In any event, all this discussion is academic as Justice S. C. Gupte, who is now the new IP Judge, does not follow this practice.

    Reply

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