In line with the creation of Intellectual Property Division and announcement of IPD Rules by the High Court of Delhi, the High Court of Judicature at Madras has also notified the creation of Intellectual Property Division (IP Division) in the Madras High Court presided over by a Single Judge Bench and a Division Bench to deal with disputes and cases concerning IPR. The High Court has also notified “Madras High Court Intellectual Property Rights Division Rules, 2022 (the “Madras High Court IPD Rules”), which will govern and regulate the proceedings before the IP Division. The IPD Rules has came into effect from April 5, 2023.
The Madras High Court IPD Rules prescribe the practice and procedure for the exercise of the original and appellate jurisdiction of IP Division and for other miscellaneous petitions arising out of specific IP statutes including 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 Act, 2000.
Salient features of the Madras High Court IPD Rules are:
- Every IPR case or proceeding filed before, or transferred to, the IP Division shall be heard and decided by a Single Judge of the IP Division except those that are to be decided by a Division Bench.
- In case of multiple proceedings relating to the same or related IPR, irrespective of whether the said proceedings are between the same parties or not, the IP Division may on its own motion or on an application of any other parties, and after hearing such parties, direct consolidation of proceedings, hearings, and also to direct consolidated recording of evidence/ common trial and consolidated adjudication.
- The IP Division may seek assistance or opinion of any persons with special knowledge and skills on the subject matter of the IPR case. The opinion of such experts shall be recorded in writing and may be considered by the IPD. The party whose interest the evidence of the said experts is adverse to, shall be permitted to cross-examine such experts.
- The provisions of the Commercial Courts Act, 2015, Madras High Court Original Side Rules, 1994 as also the practice notes / directions issued from time to time, to the extent there is no inconsistency with the IPD Rules, shall be applicable to original petitions filed in the IP Division.
- Any order of the High Court in any IPR cases or proceedings involving any proceedings before the respective Intellectual Property Offices (IPO), shall be served upon the concerned IPO and the said IPO shall cause such changes to the entry(ies) in the respective Register or proceed in the matter as directed therein.
- Evidence is allowed to be recorded through video conference by Local Commissioner and/or videography and transcription technology or by use of any other technology.
- All cases under various categories received in the Madras High Court from the IPAB shall be renumbered, given the nomenclature as provided for in the IPD Rules without levy of any fresh or additional court fees.
- The Madras High Court IPD Rules clarify that the 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.
We have witnessed significant qualitative and quantitative changes in the adjudication of IPR disputes with the creation of the IP Division at the High Court of Delhi in 2021. The appeal cases which were filed with the erstwhile IPAB and were pending for adjudication for over a decade or so, are now being taken up and disposed of in much faster manner. We expect to witness a similar result with the creation of IP Division in the Madras High Court.
The Official notification of the Madras High Court IPD Rules can be accessed here –