Calcutta High Court issues IP Division Rules

The Calcutta High Court recently adopted the much-awaited Intellectual Property Rights Division Rules, 2023 (Calcutta IPD Rules), making it the third High Court in India, after Delhi and Madras, to implement specialized regulations for IP matters. While the Calcutta IPD Rules share structural similarities and common objectives with the Delhi High Court Intellectual Property Rights Division Rules, 2021 (Delhi IPD Rules) and Madras High Court Intellectual Property Division Rules, 2022 (Madras IPD Rules), they contain several unique substantive and procedural differences. The following analysis outlines the key distinctions between these frameworks.

In contrast to the elaborate Calcutta IPD Rules, the Madras IPD Rules are more concise. While Calcutta IPD Rules incorporate specific mechanisms, such as a timeline to serve advance copies of pleadings set at four working days before listing, the Madras IPD Rules simplify matters by stating that if a specific rule is not referenced, it shall be governed by either the Code of Civil Procedure, 1908, the Madras High Court Original Side Rules, 1994 or the Commercial Courts Act, 2015.

Jurisdiction

The Delhi IPD Rules and Madras IP Rules cover all IP-related proceedings, with exceptions for those reserved for the Division Bench under the Commercial Courts Act. However, Calcutta IPD Rules provide for a designated Bench titled Intellectual Property Rights Appellate Division (IPRAD) to hear such matters, which are specifically to be tried by a Division Bench. Furthermore, appeals arising out of the orders of the Single Judge in Calcutta IPD shall be heard by such IPRAD only. The Calcutta High Court employs a dedicated dual-division structure for appeals, thus providing a more structured approach to handling appeals, specifically in IP cases.

Confidentiality mechanisms

The Delhi IPD Rules provide provisions to establish confidentiality clubs to safeguard sensitive information during proceedings. While no such mechanism is present in the Madras IPD Rules, it states that no party is entitled to produce additional evidence except with the leave of the court. The Calcutta IPD Rules do not use the same terminology but provide measures to maintain confidentiality in matters wherever required.

Translation

The Calcutta IPD Rules specifically provide for non-English documents to be accompanied by a certified English translation or an online translation, which can be challenged for accuracy by the opposing party. The Delhi IPD Rules do not mention anything specific to cover translations, which presumably are governed by the Delhi High Court (Original Side) Rules, 2018. Madras IPD Rules have a residuary provision stating that all procedures not specifically provided for in the Rules will be followed as per the Civil Procedure Code and Commercial Courts Act.

Service of advance copy of pleadings

The Delhi IPD Rules mandate serving advance copies of pleadings at least two working days before listing, while the Calcutta IPD Rules extend this timeline to four working days, following the Calcutta High Court Commercial Courts Practice Directions, 2021. There is no specific mention of such a rule in Madras IPD Rules.

Time limit for replying to original petition/application

The Delhi IPD Rules provide for a reply time of 60 days or as directed by the Court for any reply to Petitions/Applications, while the Madras IPD Rules state the default timeline of 30 days for response or as per the Court’s order. Calcutta IPD Rules sets a default reply time of 45 days for most IP matters, which is extended to 90 days for applications under the Patents Act 1970, Protection of Plant Varieties and Farmers’ Rights Act, 2001, and Semiconductor Integrated Circuit Layout Design Act, 2000 thereby offering greater flexibility in reply timelines based on the type of IP matter.

Special provisions in the Calcutta Rules

• Introduction of fast-track proceedings, including curated timelines provided by the court, expediting the resolution of time-sensitive IP matters.
• Specific guidelines for matters concerning franchising, licensing, and technology development agreements.
• Warning list for transferred matters from the erstwhile Intellectual Property Appellate Board to facilitate timely notification to appellants. This list shall be published weekly.
• Any prior events of default shall be considered when setting new timelines or issuing directions.
• Provision for the renumbering of transferred suits and proceedings under Rule 8(a).
• Curated and speedy timelines for transferred matters. The IPRAD can issue new directions and compliance requirements, reflecting a more structured approach to managing transferred cases.

Conclusion

The IPD Rules of the Delhi, Madras, and Calcutta High Courts mark significant milestones in the specialized adjudication of IP disputes in India and the judiciary’s commitment to providing specialized, efficient resolution of IP disputes. The Calcutta IPD Rules introduce notable changes such as structured appellate mechanisms and scope for curated speedy timelines for IP matters.

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