In a huge development for IP community, the Madras High Court Intellectual Property Division Rules, 2022 have been notified in the official gazette dated April 5, 2023 (pdf). The current notification comes after the directions of the Court to notify the inauguration of the IP Division in Galatea Limited v. Registrar General, High Court of Judicature of Madras (see posts here and here), making it the second Court in the country to have an IP Division, after the Delhi High Court. The Rules state that after the abolition of the IPAB, consequent to the Tribunal Reforms Act, 2021, the Court had constituted the “Intellectual Property Committee” to formulate the procedures and after receiving the committee’s recommendations, the Court has created the IPD. Sukanya Sarkar of Managing IP in this (paywalled) piece has reported that the committee constituted Justice M Sundar, Justice Abdul Quddhose and Justice Senthil Kumar Ramamoorthy, assisted by IP lawyers Shuba Shiny, Sathish Kumar and M S Bharath.
I reached out to the co-opted committee member M. S Bharath, Founder and Managing Partner of KRIA Law, Chennai, for any comments on the background of these rules and he was kind enough to provide some wonderful insights. Mr. Bharath highlighted that the rules have to be seen keeping in mind the history of the Madras High Court, which was established 158 years ago, in 1865. This makes the court one of the oldest in the country! He further highlighted that the Madras High Court’s Original Side Rules predate the Civil Procedure Code and unlike the Delhi High Court, which was established via a statute, the Madras High Court is one of the only 4 chartered courts in the country besides Allahabad, Bombay, and Calcutta. On the journey behind the rules, Mr. Bharath pointed out that after the abolition of the IPAB and the establishment of the Intellectual Property Committee by the Court, the committee’s report recommending the Rules was shared with the Court in April, 2022, which was approved by the court in July, 2022. The Rules were then shared with the Government in October, 2022 to notify. However, owing to the need for clarity and uniformity pertaining to court fees, the notification was kept in abeyance. Mr. Bharath then stated that in the interim some 35 writ petitions were filed in February, 2022 wherein the petitioners raised the issue that without notification of the concerned IPD Rules after the abolition of the IPAB, the litigants are left without any appropriate remedy. Owing to this deadlock the Court directed the Registrar of the High Court to appear and inform about the status of the IPD Rules, who submitted that the same has already been placed before the State Government for notification, in October 2022. The Court then inquired about the status of the Rules from the State Government and via the order passed in March, 2023 in Galatea Ltd. v. Registrar General, High Court, directed to notify the Rules within 1 week, thus putting the matter to an end.
Readers may know that the Madras High Court has 2 benches, one in Chennai and another in Madurai, and like me may have wondered if this will impact the implementation of the Rules in any manner. On this, Mr. Bharat pointed out that the Madurai Bench is only for Appeals (IP Appellate Division) including appeals relating to IP proceedings from the district courts in Southern Tamil Nadu, whereas the Madras High Court bench in Chennai has the original jurisdiction and the seat of the IPD. Furthermore, he explained that Rule 8 of the new Rules (which talks about IPD to be presided by a dedicated Single Judge or a Division Bench) read with Rule 10 (enumerating the list of what all shall be regarded as IPR cases) makes it clear that the newly formed IPD will function with a common registry wherein all the dispute from different IPOs can be filed, including Appeals, Rectification, Cancellation, Infringement, Passing off and Writ Petition. Another stand-out feature of the Rules highlighted by him is that the rules will not be applicable in matters pertaining to Public Interest Litigation or criminal proceedings. On the date of the inauguration of the IPD, he said that the Division is expected to be inaugurated in the coming week of April 10, 2023.
At a quick glance at the rules, the following points stand out:-
- The rules have been framed by the exercise of the powers conferred under Section 129 of the Code of Civil Procedure, 1908 and Clauses 37 and 38 of the Letters Patent,1865, and under the various Intellectual Property statutes. The preamble states that the rules shall be applicable with respect to practice and procedure for ordinary original, appellate, criminal and writ jurisdiction of the court. However, under Rule 2(7) Explanation (iii) it is specified that these rules do not apply to criminal proceedings arising out of the IP statutes.
- The relevant IP statutes identified under the rules are – 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; And, notably the Information Technology Act, 2000.
- Rule 2 (7) defines the“Intellectual Property Rights (IPR) Disputes”, which include only proceedings of 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;
- ncluding 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
- The Explaination to Rule 2(7) states that
- For the purpose of these Rules, cases pertaining to the Information Technology Act, 2000 dealing with the rights and liabilities of intermediaries, online marketplaces, e-commerce platforms involving issues relating to any of the aforementioned rights, shall be deemed to be within the purview of intellectual property rights.;
- intermediaries, online marketplaces, e-commerce platforms shall have the same meaning as under Section 2(w) of the Information Technology Act, 2000.
- as stated above, these rules do not apply to criminal proceedings arising out of the penal provisions under the Acts(s).
- Rule 4 states that the Jurisdiction of the IPD shall be over every IPR case or proceeding filed before, or transferred to, the IPD and will be decided by a Single Judge of the IPD except those that are to be decided by a Division Bench including those proceedings as per Section 13 of the Commercial Courts Act, 2015.
- Rules 5-9 are about the procedures for Suits, Civil Original Petitions, Appeals, Writ and Civil Revision Petition respectively.
- Rule 13 talks about the Expert Evidence that the court may invite on application of a part or on its own accord and under Rule 13(3) in case the expert evidence is adverse to the interest of a party, then the party can cross-examine the expert.
Also a hat tip to Priyam Lizmary Cherian and Srikanthan S for sharing the copy of the Rules with us.