[This post is co-authored by SpicyIP Intern Pranav Aggarwal, Praharsh and Swaraj. Pranav is a second-year student pursuing B.A.LL.B.(Hons) at Rajiv Gandhi National University of Law, Punjab. He has a keen interest in commercial laws, especially in IP and allied fields. His previous post can be accessed here.]
On December 19, 2023 the High Court at Calcutta published the draft IPR Division Rules of High Court at Calcutta, 2023 (“Calcutta Rules” or “Rules”), making it the third High Court after Delhi and Madras to come up with a dedicated IP division (titled IPR Division or IPRD) to handle IP disputes (see here and here to see posts on these Rules. As stated in the preamble of the proposed Rules, after the promulgation of the Tribunals Reforms Act, 2021, a committee was established to devise a mechanism to establish a dedicated IPRD and IPR Appellate Division in the Calcutta High Court. This mechanism was to be devised owing to the abolition of the Intellectual Property Appellate Board (“IPAB”), and is to adjudicate on the pending 618 cases (see the discussion by J. Soumen Sen here on this) that were transferred to the Calcutta High Court after the IPAB’s abolition alongside other pending and future IP disputes.
Publishing the proposed Rules, the court adopted a seemingly inclusive approach towards improving the same and has invited comments from the members of the Bar and relevant stakeholders. However, only 17 days, (that too over Christmas and New Year) were given to the stakeholders to submit their comments by January 5. This leaves interested stakeholders with very little time to engage with this process. For the convenience of readers and others who may want to submit their own comments, we’re sharing our thoughts on some of the draft provisions, and would highly encourage others who are able to, to send in feedback of their own as well.
Glancing through the three sets of Rules (Madras, Delhi and now Calcutta), there are a lot of substantially similar elements, and there were a few interesting differences as well. For instance, the proposed Rules prescribe a lesser court fee (INR 5000) than its Madras and Delhi counterparts for appeals against the orders passed by the Trademarks Registry and the Copyright Office (INR 10,000). Similarly, the proposed Rules prescribe a specific fee of INR 10,000 for original petitions/ applications concerning matters falling under the IT Act and Semiconductors and Integrated Circuit Act, and a fee of INR 5000 for appeals under the IT Act and Semiconductors and Integrated Circuit Act. However, no such specific fees are given under the IPD Rules of Madras and Delhi High Courts. Nonetheless, it is not clear if this is actually a problem and will have to wait out to see if these differences will make a difference in adjudication by the IPRD. For other differences, where we see room for improvement or clarification, we’ve listed them out below:
[Please note: We’d be happy to link to/share other submissions to the Court if anyone would like to share their comments with us.]
I. Substantive Suggestions
1. Removal of Specific Translation Tools: Rule 26 of the proposed rules provides an option for translation through online translation softwares like Google Translate or Bing Translate. However, keeping in mind the complexity of legal documents and the illsuitedness of general translation softwares to accurately translate them, sole reliance of softwares would be very problematic. To translate legal documents, a certain standard like ISO 20771:2020 or ISO 17100:2015 has been established for individual translators. Such similar standards have to be identified for softwares as well to ensure appropriate translations. If such a standard is not found, or ideally, even if one is found, an approval by a certified translator should be seen as necessary to ensure the accuracy of such translations. Finally, the rules should avoid suggesting specific softwares like Google or Bing because firstly, it is not known on what criteria they have just mentioned them; and secondly, such a suggestion would lead to the endorsement of the softwares owned by very large private corporations that make no accountability assurances regarding their translation services. The court should avoid such unnecessary endorsements.
Recommendation: The Rules should not consider online softwares as sufficient for translation of legal documents to be used for court purposes. If they must, then at least some basic well established criteria should be specified, to admit documents translated through such online softwares. Such software generated translations should be then subjected to approval by a certified translator. Additionally, the name of any specific software should not be suggested or endorsed in the Rules for translation and only the criterion should be clearly laid down and adhered to.
2. Criteria for Independent Experts: Under Rule 22, the Proposed Calcutta Rules provide for ‘Independent Experts’. This is a well appreciated move especially considering that many IP matters are highly technical in nature. Regarding this, Rule 22 states that experts can be appointed from a list of willing individuals furnished by the parties or a list of experts that would be maintained by the department to administer and manage proceedings before the IPRD. However, the proposed Rules do not state anything about the criteria for selecting experts for these lists.
Recommendation: Clarity is required regarding the mode and criteria for adding an expert’s name to the two lists of experts.
3. Right to Audience: The proposed Rules do not include any provision to accommodate a request for the audience by any party who may have knowledge about the subject matter of the dispute. The proposed Rules only make accommodations to appoint an independent expert. However, it is suggested that the court should also accommodate to hear any other person like a patent agent, academician, etc. possessing the necessary knowledge about the subject matter of the dispute. Such a provision is made within the Delhi High Court IPD Rules under Rule 34.
Recommendation: It is suggested that the proposed Rules be amended to include a provision granting patent agents and academicians a right of audience before the court. These parties shall be the ones who would know the technical subject matter of the dispute and the right shall be subjected to the satisfaction of the court first.
4. Inclusion of Provisions for Legal Researcher: The proposed Calcutta Rules do not mention any provision for any Researcher or clerks for the Judges of the IPRD. Appointment of such staff equipped with handling technical and legal issues will surely serve as an asset for the division and will enable efficient functioning of the IPRD. Aid and assistance from these legal researchers/ law clerks will help the court in not just speedy disposal of cases but will also promote well-informed decisions for every case and not just those cases wherein independent experts will be appointed. Provision of appointing such staff members possessing technical and legal knowledge has been made under Rule 32 of the Delhi High Court IPD Rules and is also a practice followed by other courts abroad (for example see the sections in the linked report about the Court of Appeals for the Federal Circuit, USA and the IP High Court, Japan).
Recommendation: It is recommended that the proposed Rules make provision for the appointment of Legal Researchers/ Clerks with relevant qualifications for the aid and assistance of the judges of the IPRD. Considering that such appointments are practiced across different national and international courts, the proposed Rules should also formalize the same by prescribing appropriate budget, selection criteria, and other necessary formalities.
5. Accessibility and Reasonable Accommodations: The proposed Rules presently do not take into account accessibility issues faced by persons with disabilities while accessing court documents. Though the Calcutta High Court E-Filing Rules, prescribed for converting a document to the Optical Character Recognition (OCR) searchable PDF document, the present Rules do not make any reference to these Rules nor re-assert the requirement to make filings in an OCR PDF Format. Additionally, there is no provision to ensure reasonable accommodation of the request of a person with disability, appearing before the IPRD. Such provisions have been made under the Delhi High Court Rules under Rule 36.
Recommendation: It is highly recommended that the proposed Rules include provisions on accessibility and reasonable accommodations. The rules should specify the relevant format to which documents should be converted, aligning with its E-Filing Rules. Furthermore, the proposed Rules should include a mechanism empowering the court to issue directions to provide reasonable accommodation to a person with a disability recognized under the Rights of Persons with Disabilities Act, 2016.
II. Clarificatory/ Procedural Suggestions
6. Clarification regarding Additional Subject Matter for Proceedings. Under Rule 2(k) of the proposed Calcutta Rules, the subject matters of the proceedings are provided. While the proposed Rule gives an inclusive definition, it has not included disputes arising out of enforcement by the customs authorities u/s 11 of the Customs Act against the import and export of goods.
Recommendation: For clarity, the proposed Rules can specifically make a reference to the challenges against the orders passed u/s 11 of the Customs Act prohibiting importation or exportation of goods. Such a specific reference has been made in Rule 2(7)(vii) of the Madras High Court IPD Rules as well. However, no such provision has been made in the Delhi High Court IPD Rules.
7. Clarity over Criminal Proceedings: The proposed Calcutta Rules are silent on its implementation on criminal proceedings. Penal remedies are prescribed within the Trademarks Act (Section 103- 108) and Copyright Act (63-70). However, the proposed Rules are not clear whether proceedings regarding penal remedies will fall under their ambit thus allowing ambiguity. Such a clarification has been given in the Madras High Court which under Rule 2(7) explanation (iii) expressly excludes criminal proceedings arising out of the penal provisions under the different Acts. However, such direct reference has not been made in the Delhi High Court IPD Rules.
Recommendation: A clear rule on whether criminal proceedings are excluded or included within the ambit of the proposed Rules should be introduced.
8. Distinction of Writ Petitions: Rule 11 and Schedule 1 of the proposed Calcutta Rules mention ‘writ petition’. A writ petition under Article 226 of the Constitution can be of both civil or criminal nature. In intellectual property cases, as mentioned above, criminal liabilities may also be invoked under the writ jurisdiction. However, the proposed Rules do not specify whether both criminal and civil writ petitions are included herein. Under Rule 2(o)(ii) of the Delhi IPD Rules, the nature of the writ petition has been clearly provided as ‘civil’.
Recommendation: It is suggested that the proposed Rules clarify and specify the nature of the writ petitions mentioned herein for unambiguous adjudication of the matters.
9. Definition of “Appeals”: Rule 2(d) of the proposed Rules defines appeals as “unless the context otherwise requires, it shall mean an appeal filed before the High Court under the Acts specified in Rule 2(a) above and appeals arising out of proceedings instituted under Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015”.
There are two potential issues with this definition:-
i) The definition is extremely broad and does not clearly specify the types of appeals that can be filed before the High Court under the different IP Acts. Later under Rules 10 (Appeals against the orders and judgements of courts other than a High Court) and 13 (Appeals against the orders of the IPO) the draft Rules provide some clarity on the type of appeal it concerns with. However, this clarification is required for the definition clause for appeals as well.
Recommendation: For better understanding and clarity regarding the scope of the definition, the proposed definition can be substituted by one that states the relevant provisions for appeal under different Acts i.e. Section 91 of The Trade Marks Act, Section 72 of The Copyright Act, Section 117A of The Patents Act, Section 31 of The Geographical Indications Act, Section 56 of The Protection of Plant Varieties and Farmers’ Rights Act, Section 42 of the Semiconductor and Integrated Circuits Act, Section 62 of the Information Technology Act, Sections 36 of the Designs Act, Section 130 of the Customs Act. This approach of specifying the provisions in the definition clause for “appeal” is followed by the Delhi High Court IPD Rules and the Madras High Court IPD Rules also use such specific language for “Appeal” in Rule 2(d) and Rule 2(4) respectively.
ii) The present proposed definition of appeals includes proceedings “instituted under Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015”. However, Section 2(1)(c)(xvii) of the Commercial Courts Act, 2015 is a definition clause and no proceedings are per se instituted under this section.
Recommendation: It is recommended that the Rules should instead specify the relevant provision under the Commercial Courts Act for Appeals (Section 13), as done in the Madras High Court IPD Rules.
10. Qualification of Judges: Under Rule 4 of the proposed Calcutta Rules, the judges for the IPD “shall preferably have experience in dealing with intellectual property subject matter”. Although such a first of its kind rule is surely welcome, more clarity can be brought as to what ‘experience in dealing with’ includes. Presumably it refers to whether the judge has dealt with IP cases in the past. Would this take into account the previous practice, on IP laws, of the concerned judge (for those called to the bench, from the bar). Or will it also consider the academic qualifications of the concerned judge? Some clarity on this point will be helpful in understanding how the appointment of judges to the specialized IP benches takes place.
Recommendation: An indicative criteria for determining the experience of a judge before their appointment to the IPD should be specified by the Rules.
11. Introduce Specific or Maximum Timelines: Under Rules 7 to 11 of the proposed Rules, a “shall endeavour” clause has been introduced regarding expeditious disposal of proceedings. Though a noble inclusion, these clauses neither serve any concrete purpose nor per se ensure expeditious disposal of proceedings.
Recommendation: Instead of the “shall endeavour” clause, specific or maximum timelines for disposal of proceedings could be stated in the Rules.
12. Introduction of Relevant Proviso for Advance Service: Rule 16 of the proposed Rules requires the advance copy of the pleadings to be given directly or through email and post to the other parties. While it is appreciated that the proposed Rules are taking into account alternative methods of service, there may be cases wherein the email id of the relevant parties might not be available.
Recommendation: For clarity, the aforesaid Rule should have a proviso stating that the advance copies of the pleadings can be serviced only through post in case the email ID of the relevant party is not available.