Intellectual Property Appellate Division

The Appellate mechanism for Intellectual Property Rights was with the High Courts, before the introduction of IPAB, the object and reasons for the introduction of the tribunal, in 2003,  stated that it is being set up “for speedy disposals of appeals and rectification application which at present lies before High courts.” By virtue of the Tribunal Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 five unique appellate tribunals were abolished that included the Intellectual Property Appellate Board (IPAB) as well. After this abolition, the appellate jurisdiction has been granted back to the High Courts due to the persisting loopholes in the Tribunal. Many of the High Courts have started establishing a separate division for handling IPR cases under the name of the Intellectual Property Division. The Delhi High Court started this for the first time.

What was the Intellectual Property Appellate Tribunal?

Intellectual Property Appellate Board had been constituted by a Gazette notification of the Central Government in the Ministry of Commerce and Industry on 15th September 2003 to hear appeals against the decisions of the Registrar under the Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999. After four years, in 2007 the IPAB jurisdiction was extended to the Patents Act, 1970. Later through the Finance Act in 2017, it was further extended to the Copyright Act, of 1957.

Constituting Act

The Trademarks Act of 1999 proposed the establishment of an Appellate Board in its Statement of Objects and Purpose, aiming to expedite the review process for High Court appeals and rectification applications. It was Section 83 of the Trademarks Act, 1999 that outlined the provision for the establishment of IPAB.  

Composition

The omitted Section 84 of the Trademark Act. 1999 provided for the composition of the IPAB Tribunal. Accordingly, the IPAB consisted of a Chairman, Vice-Chairman and such number of other Members, as the Central Government may, deem fit. Furthermore, a bench had one judicial and one technical member.

Section 85 of the Trademark Act provided for the qualifications for all members of IPAB. The Qualification for the position of Chairman included

• Either being a serving or a retired Judge of the High Court or
• Having two years experience as vice-chairman of IPAB.

For Vice-Chairman:

• Held the office of a Judicial Member or a Technical Member for a minimum of two years. Or
• Been a member of the Indian Legal Service and held a Grade I post or higher for at least five years.

For Judicial Member:

• Been a member of the Indian Legal Service and held a Grade I post for a minimum of three years. Or
• Held a civil judicial office for at least ten years.

For Technical Member:

• Exercised tribunal functions under the Trademarks Act or the Trade and Merchandise Marks Act, 1958, for at least ten years, and held a post not lower than Joint Registrar for five years. Or
• Been an advocate with proven specialized experience in trademark law for at least ten years.

Tenure

The chairman, Vice-Chairman, or other Members could hold office for five years from assuming office or until they reach a particular age. For the Chairman and Vice-Chairman, the threshold age was sixty-five and for members, the age was sixty-two.

Challenges

1. The IPAB consistently faced challenges due to insufficient staffing and funding, making it seem like a makeshift solution for issues within the innovation system.
2. After nearly two years without leadership, in January 2018, the IPAB finally appointed a chairperson.
3. Technical issues caused significant delays in commencing hearings for patent cases.
4. Previous chairpersons publicly expressed concerns about the IPAB's judicial and institutional independence.
5. It was operating across five different cities with only one chairperson necessitating frequent travel, which also resulted in additional expenses for summoning parties and documents, ultimately burdening the public cost-wise.

However, by virtue of the Tribunals Reforms (Rationalisation and Conditions of Service) Ordinance, 2021 dated 04th April 2021, the IPAB was dissolved with effect from 04th April 2021. After the abolition of IPAB, the pending cases of IPAB were transferred to the Commercial Courts and the High Courts for adjudication.

Amendments under various Intellectual Property Legislations after abolition of IPAB

Under the Copyright Act, of 1957, section 12 defining the powers and procedure of the Appellate Board has been deleted.  In the Patent Act, of 1970, under the provisions of the act, ‘Appellate Board’ is substituted for the ‘High Court’. In the case of the Trademark Act 1999, with the abolishment of the IPAB, the power of appeals against the decision of the Registrar of Trademarks has been transferred to the High Court. Chapter XI included the mention of Appellate Board has been omitted and under section 91 the term Appeals to Appellate Board has been substituted as Appeals to High Court. Similarly under the Protection of Plant Varieties and Farmers’ Rights Act, 2001, section 54 mentioning the Appeals to Appellate board has been omitted and under Section 56 the Appeals to High Court has been mentioned. Section 31 of the Geographical Indications of Goods (Registration and Protection) Act, 1999, grants High Courts the power to act as Appellate courts.

Intellectual Property Division

Intellectual property Division can be defined as a specialized division of the court, designed to handle Intellectual Property Cases. The committee headed by Rajya Sabha member V Vijaysai Reddy, presented 169th Standing Committee report, had suggested that the government encourage the high courts to set up intellectual property divisions (IPDs) for effective and timely resolution of IP-related cases following the abolition of the Intellectual Property Appellate Board (IPAB).

Delhi High Court:

A committee formed by the chief justice of the High Court of Delhi had recommended the creation of an IP division, or specialist IPR benches, for the first time in India. The purview of such a division would include all matters relating to IP, such as:

• Fresh and pending infringement suits;
• Appeals against the decisions of the patent/trademark/copyright offices;
• Revocation/cancellation actions; and
• Applications for rectification of the patents/trademark register.

The IPD is a distinct and specialized division that was set up to exclusively adjudicate matters pertaining to intellectual property (IP). Apart from obvious advantages that stem from specialist judges, the IPD is also very progressive in terms of procedure.

On February 24 2022, the Delhi High Court Intellectual Property Rights Division Rules, 2022 (the ‘IPD Rules’) and the High Court of Delhi Rules Governing Patent Suits, 2022 came to be notified. Both sets of rules comprehensively lay down the procedure and timelines for various actions, including:

• Infringement suits;
• Revocation petitions;
• Appeals arising from refusal orders passed by the Indian IP offices; and
• Various other proceedings that, in the past, were managed by the IPAB.

Further, at any stage, as per the opinion of the IPD judges, the appointment of a qualified mediator or panel of mediators, including mediators with expertise in a particular stream of IP, can be mandated where the consent of the parties will not have any bearing. Nevertheless, mediation can take place simultaneously with the legal proceedings in court to avoid any delays in the adjudication process.

Furthermore, appeals against orders of the IPD shall lie to the Division Bench either in the form of a Letters Patent Appeal or in the form of appeals to the Commercial Appellate Division under Section 13, Commercial Courts Act, 2015.

At first, two benches of the Delhi High Court were specifically assigned to handle all intellectual property rights (IPR) cases. However, due to the increased number of IPR cases, a third bench has been established more recently.

The IPD, apart from the original jurisdiction, has infringement jurisdiction, appellate jurisdiction from the IP Office, revisional jurisdiction from the commercial courts, and extraordinary writ jurisdiction supervising the IP Office.

Madras High Court

Madras High Court’s Intellectual Property Rights Division was formally inaugurated on 12 April, right after the issuance of the Madras High Court Intellectual Property Division Rules for 2022 on 5 April 2023. This notification follows the court’s directive in the Galatea Limited v Registrar General, High Court of Judicature of Madras case, which mandated the formal inauguration of the IP division.

As per the gazette “Intellectual Property Rights Division (IPD)” is defined as the division in the Madras High Court presided over by a Single Judge(s) or a Division Bench as the case may be to deal with disputes and cases concerning IPR cases or proceedings.

Rule 4 of Madras HC IPD rules mention the jurisdiction of the division wherein every IPR case or proceeding filed before, or transferred to, the IPD is to be heard and decided by a Single Judge of the IPD. However, there are certain cases that are to be decided by a Division Bench including those proceedings as per Section 13 of the Commercial Courts Act, 2015.

These rules also provide for the assistance or opinion of experts on the subject matter of the dispute. The opinion of such an Expert has to be recorded in writing and then it can be considered by IPD. Cross-examination of such experts is also permitted by the opposite party to the dispute. All of which has been provided under Rule 13.

Calcutta High Court

The High Court at Calcutta is in the process of framing the Intellectual Property Rights Division Rules Of The High Court At Calcutta, 2023. A draft of the proposed Rules has been issued in the public sphere and the suggestions had been invited from the members of the Bar, stakeholders within January 5th, 2024.  

As per the draft Rules, there will be an Intellectual Property Rights Division (IPRD), Intellectual Property Rights Appellate Division (IPRAD) and Intellectual Property Rights Division Department.

The IPRD is defined as a division in the High Court having two or more Benches consisting of Single Judges for the purpose of exercising the jurisdiction and powers on all transferred IPAB proceedings; all Intellectual Property subject matter proceedings pending in the High Court on the effective date, except those required to be heard before a Division Bench and all Intellectual Property subject matter proceedings filed after the effective date except those required to be heard before a Division Bench.

The IPRAD will have exclusive jurisdiction on all Intellectual Property subject matter proceedings that are to be heard by a Division Bench will be transferred. Further, the IPRAD will hear all appeals against orders passed by the IPRD.

As of now the Calcutta High Court along with Bombay High Court and Gujarat High Court have allotted nomenclature to all the IPR cases and the same is also mentioned in the Roster in these Courts. Matters are stated to be assigned on a non-exclusive basis to specific Benches.

Official Database

Delhi High Court

The Annual Report of Delhi High Court Appellate Division provides statistical information relating to matter received by IPAB.

Matters received from IPAB Delhi High Court Intellectual Property Division Annual Report 2022-23, Available at: https://delhihighcourt.nic.in/uploads/publication/213033669764676f5dda169.pdf

Original Patent Petitions Delhi High Court Intellectual Property Division Annual Report 2022-23, Available at: https://delhihighcourt.nic.in/uploads/publication/213033669764676f5dda169.pdf

Trademark Appeals Delhi High Court Intellectual Property Division Annual Report 2022-23, Available at: https://delhihighcourt.nic.in/uploads/publication/213033669764676f5dda169.pdf

Nature of Actions by IPD Delhi High Court Intellectual Property Division Annual Report 2022-23, Available at: https://delhihighcourt.nic.in/uploads/publication/213033669764676f5dda169.pdf

International Experience -

Australia:  The Federal Court has both first instance and appellate jurisdiction. Appellate matters are typically heard by three or more judges sitting together as the Full Court of the Federal Court. The High Court is Australia's ultimate appellate court.There is no automatic right of appeal to the High Court from a decision of a lower court. Instead, a party must apply for special leave to appeal.

United States: The Supreme Court of the United States (SCOTUS), Court of Appeals for the Federal Circuit (CAFC), Twelve (12) Federal Regional Courts of Appeal and U.S. State Supreme Courts act as the appellate courts.

Japan: Appeals from district courts in civil cases relating to patent rights, utility model rights, rights of layout-designs of integrated circuits, and rights of the authors of a program work come under the exclusive jurisdiction of the Tokyo High Court (Article 6(3) of the Code of Civil Procedure), and are heard by the IP High Court (Article 2(1) of the Law for Establishing the IP High Court).

Research related to IPR Jurisdiction -

(WIPO) has recently published an International Guide to Patent Case Management for Judges, which provides a detailed overview of patent case management, including the judicial functioning from 10 countries, including India, Australia, UK, USA, Japan, China and Germany.

EXAMINING INDIA'S JOURNEY TOWARDS SPECIALIZED IP JURISDICTIONS- CHARTING A TRAIL FROM COMPARATIVE LAW AND HISTORY:

The paper assesses the effectiveness of specialized intellectual property (IP) jurisdictions in India, specifically the IP division bench of the Delhi High Court (IPD) and the former Intellectual Property Appellate Board (IPAB). It examines whether the IPD has addressed the shortcomings of the IPAB, focusing on factors like vacancies, case disposals, expert involvement, and subject matter competence. The study's primary focus is on patents, highlighting the need for specialized adjudication in IP matters.