Calcutta’s IP Division Rules 2023: Key Features And Distinctions

Introduction:

The recent introduction of the Calcutta High Court’s Intellectual Property Rights Division Rules, 2023[1] (Calcutta HC IPD Rules), marks a development for the court as it joins the ranks of the Delhi and Madras High Courts in establishing a dedicated IP Division. These Rules come as a response to the dissolution of the Intellectual Property Appellate Board (IPAB) by the Tribunal Reforms Act, 2021, and they outline the procedures and fees related to IP litigation in the Calcutta High Court.

About the Rules:

The final version of the Calcutta HC IPD Rules incorporates some changes from the draft, particularly regarding accessibility for people with disabilities. Reflecting suggestions made during the public consultation phase, Rule 29 of the final Rules requires the IP Division to provide reasonable accommodations for persons with disabilities, aligning with the Rights of Persons with Disabilities Act, 2016. This provision marks a positive step toward inclusivity in the legal process. Similarly, the final Rules now mandate that all documents be filed electronically with Optical Character Recognition (OCR) enabled, making filings more accessible to visually impaired individuals. Despite this requirement, the current version of the Rules available on the Calcutta High Court’s website lacks OCR functionality, indicating that there may be a need for further updates to ensure compliance with this provision.

Regarding translation, the draft Rules included a somewhat controversial clause that suggested using online translation tools such as Google Translate and Bing. In response to concerns raised about the reliability and accuracy of machine translations, the final Rules removed specific references to these platforms. However, they still leave the accuracy of translations subject to challenge by opposing parties, rather than providing a more robust mechanism for verifying translations. While this approach allows for flexibility, it also places the burden on the parties involved to ensure accuracy, which may prove challenging in cases where precise language is critical.

Furthermore, the final Rules extended the time allowed for serving pleadings to the opposing parties from two days, as initially proposed, to four days. This adjustment is likely to be well-received by practitioners, as it grants them more time to prepare responses and ensures a fairer process. In addition, the drafting process for these Rules highlighted the Calcutta High Court’s commitment to stakeholder engagement. Despite the short timeframe given over the Christmas and New Year period, the public consultation phase allowed for valuable input from members of the legal community and other interested parties.

Comparative analysis:

The Calcutta HC IPD Rules share various commonalities with their Delhi and Madras counterparts in terms of structure and procedural requirements, though notable differences do exist. One key difference lies in the fees prescribed by the Calcutta HC IPD Rules. For instance, while the Calcutta Rules mandate a court fee of INR 5,000 for appeals against decisions from the Trademark Registry and the Copyright Office, both Delhi and Madras impose a higher fee of INR 10,000 for similar filings. Moreover, the Calcutta Rules stipulate distinct fees for applications under the IT Act and the Semiconductor and Integrated Circuits Layout Act, specifically, INR 10,000 for original applications and INR 5,000 for appeals, while no equivalent fees are specified in the other two High Courts’ Rules. This variation in fees could be an attempt by the Calcutta High Court to make the IP Division more accessible or to differentiate its services. However, whether this fee difference will impact the efficiency or frequency of case filings remains to be seen.

Another point of divergence is in the subject matter each court addresses. The Madras IPD Rules include provisions for cases arising from enforcement actions by customs authorities, a focus not found in the Calcutta Rules. This distinction might lead to specific cases gravitating towards Madras, especially where issues related to the protection of intellectual property at the border are involved. Given the importance of customs enforcement in curbing IP infringement, particularly in cases of counterfeit goods, the omission of such provisions in the Calcutta Rules could be seen as a gap, potentially prompting future amendments.

Additionally, the Calcutta HC IPD Rules are less explicit about the role of subject matter experts in IP proceedings. Unlike the Delhi Rules, which clearly allow interventions from technical experts, the Calcutta Rules do not mention this provision. In practice, such expertise can be crucial in complex IP cases, where technical insights are necessary to understand the intricacies of patents, copyrights, or trademarks. Although it is still possible for interested experts to request participation in a case, the Calcutta High Court could benefit from explicitly outlining the process, as seen in the Delhi High Court’s Rules. This change could facilitate smoother proceedings and a greater depth of analysis in cases requiring specialized knowledge.

Conclusion:

Overall, while the Calcutta IPD Rules align closely with those of Delhi and Madras, they include several unique features, such as lower court fees, specific accommodations for persons with disabilities, and an extended timeline for serving documents. These features could influence the nature of IP litigation in the Calcutta High Court and encourage future adjustments to promote efficiency and accessibility in IP litigation across the country.

[1] https://calcuttahighcourt.gov.in/Notice-Files/gazette-notification/12428