The High Court of Delhi on 24.02.2022 in exercise of the powers conferred by Section 7 of the Delhi High Court Act, 1966, Section 129 of the Code of Civil Procedure, 1908, powers conferred under the various Intellectual Property statutes as amended by the Tribunal Reforms Act, 2021(“TRA 2021”) issued the specific Rules for the matters to be listed before Intellectual Property Division along with practice and procedure arising out of IPR and related statutes.

 

 

The main features of the DHIPRD Rules 2022 are as below

 

 

 

 

a) The Rule 2(i) enumerates “Intellectual Property Rights (IPR) subject matter” for the purpose of these Rules, shall include:

 

 

i. Matters pertaining to Patents, Copyrights, Trade Marks, Geographical Indications, Plant Varieties, Designs, Semiconductor integrated circuit layout-designs, Traditional Knowledge and all rights under common law, if any, associated therewith;

 

ii. Matters relating to passing off, acts of unfair competition, disparagement, comparative advertising etc.;

 

iii. Protection of trade secrets, confidential information and related subject matters;

 

iv. Tortious actions related to privacy and publicity rights involving intellectual property issues;

 

v. Matters pertaining data exclusivity, domain names and other matters relating to data protection involving intellectual property issues, as also those arising under the Act(s) as defined in Rule 2(a);

 

vi. Matters involving internet violations relating to any of the subject matters under clauses (i) through (v) above.

 

 

The Rule 2(i) further gives an Explanation that for the purpose of these Rules, cases pertaining to the Information Technology Act, 2000 dealing with the rights and liabilities of intermediaries, online market places, and e-commerce platforms involving issues relating to any of the aforementioned subject matters, shall be deemed to be within the purview of intellectual property rights and these shall be interpreted in terms of the definition contained in Section 2(w) of the Information Technology Act, 2000.

 

 

(b) Rule 2(l) defines the subject matter or case or proceedings or dispute shall all original proceedings, appellate and other proceedings related to IPR subject matter(s)as defined in Rule 2(i) above filed before the IPD and shall also include:

 

 

(i) Revocation applications, cancellation applications, other original proceedings, appeals and petitions from the various IPOs and all other proceedings which were hitherto maintainable before the Intellectual Property Appellate Board (“IPAB”) under provisions of the Act(s);

 

(ii) All suits filed in which IPR subject matter is involved, either under the respective statutes or under common law including suits relating to breach of privacy and rights of publicity;

 

(iii) Writ Petitions (Civil)[WP(C)], Civil Misc.(Mains)[CM(Main)], Regular First Appeal[RFA], First Appeal from Order[FAO], Civil Revision Petition[CRP] arising out of IPR subject matter(s) and disputes dealt with by the Commercial Courts in Delhi, except matters that are to be dealt with by a Division Bench;

 

(iv) All pending proceedings before the IPAB relating to Delhi jurisdiction transferred to the Delhi High Court.

 

The subject matter as defined in Rule 2(l) are further categorised in Rule 2(o) where it includes Civil Original Petition, Writ Petition (Civil) under Article 226 of Constitution of India, Civil Misc. (Main) under Article 227 of Constitution of India, Civil Revision Petition Section 115 of the Code of Civil Procedure, and Appeals as mentioned under Rule 2(d) and other appeals such as RFA and FAO

 

 

c) Rule 2(d) “Appeal” includes an appeal filed before, or transferred to, the IPD under the following sections of the respective Acts with the following nomenclature:

 

 

(i) Under Section 91 of The Trade Marks Act, 1999[C.A. (Comm. IPD-TM)];

 

(ii) Under Section 72 of The Copyright Act, 1957 [C.A. (Comm. IPD-CR)];

 

(iii) Under Section 117A of The Patents Act, 1970[C.A.(Comm. IPD-PAT)];

 

(iv) Under Section 31of The Geographical Indications of Goods (Registration and Protection) Act, 1999 [C.A.(Comm. IPD-GI)];

 

(v) Under Section 56 of The Protection of Plant Varieties and Farmers' Rights Act, 2001[C.A. (Comm. IPD-PV)];

 

(vi) Under Section 42 of the Semiconductor Integrated Circuits Layout-Design Act, 2000 [C.A. (Comm. IPD-SCD)];

 

(vii) Under Sections 36 of the Designs Act, 2000 [C.A. (Comm. IPD-DE)];

 

(viii) Under Section 62 of the Information Technology Act, 2000 [C.A. (Comm. IPD IT)]

 

 

d) The Agent and Legal Practitioner are defined under Rule 2(c) and Rule 2(m).

 

 

e) The IPD Rules further defines address of service in Rule 2(b) which now includes authorized trade mark agent, patent agent or other agent.

 

 

f) The single judge of the IPD has the Jurisdiction under Rule 4 to hear and adjudicate all matters related to IPR as defined in Rule 2(i), (j) and (l) except those that are to be decided by a Division Bench as per Section 13 of the Commercial Courts Act, 2015.

 

 

 

 

g) Rule 14 defines the procedure for suit before IPD are to be governed by the provisions of The Commercial Courts Act, 2015, Code of Civil Procedure, 1908 as applicable to commercial suits and the Delhi High Court (Original Side) Rules, 2018 in addition to Patent Suit Rules 2022.

 

 

h) As per Rule 21 all the pleadings are to be accompanied by affidavit of authorised representative and document establishing the authorization such as Board Resolution and Power of Attorney.

 

 

i) As per Rule 22 An advance copy shall be served to the address atleast 2 (two) working days in advance, intimating the likely date of listing to the Respondents including the counsels/agents, who may have represented the Respondents before the IPO.

 

 

For expeditious disposal, after advance copy being served parties/counsels/agents/authority shall be represented on the first date of hearing before the Court. If the Court is of the opinion no further notice is required, and if satisfactory proof of service is furnished, no further notice would ordinarily be issued and the matter may be heard and disposed of on the first day of listing.

 

 

 

 

a) As per Rule 15 the evidence can be now may be recorded through video conference, venue outside the premises of court, by Local Commissioner and/or videography and transcription technology or any other form of recording. Further in Rule 16 the evidence of expert may be recorded by restoring to the procedure such as Hot Tubbing as per Rule 6 of Delhi High Court (original Side) rule 2018.

 

 

b) As per Rule 17 the parties would be penalised with cost for withholding discovery attempting to scuttle the process of discovery. The procedure relating to the disclosure and discovery of documents are laid down in the CPC as amended by Commercial Court Act 2015.

 

 

c) Rule 18 has introduced Litigation Hold Notice (LHN). According to Rule 18 prior to initiation of proceedings party may issue a Litigation Hold Notice (LHN) to such other party(ies) against whom proceedings are sought to be initiated. The recipient of such LHN after being served would be bound to preserve all documentary, tangible and electronic material relating to the subject matter of the proceedings which is capable of being relied upon as evidence for a period of 1 year from the date of LHN. The documentary, tangible and electronic material includes letters, memos, internal and external correspondence, graphic representations of any kind, images, sounds, and data stored in any medium relating to the subject matter of the proceedings.

 

 

The preserved material cannot be edited or tampered with and should be preserved for the period of ligation and appeal if any. If no appeal is filed the parties shall be at liberty to freely deal with such material upon completion of 6 months form the date of closure of the original proceedings. Failing to do so, the party would be liable to penalised with cost apart from remedies under Civil and Criminal Law.

 

 

d) Under Rule 19 the court may constitute confidentiality club or adopt such measures as appropriate, consisting of lawyers (external & in-house), experts as also nominated representatives of the parties, for the preservation and exchange of confidential information filed before the Court including documents, as per the Delhi High Court (Original Side) Rules, 2018. The court upon request may direct the redaction of information which deems to be confidential and non-redacted version may be fled in sealed cover alongwith application supporting such claim for redaction.

 

 

 

 

e) Rule 20 enumerates the Damages/Account of Profits. party seeking damages/account of profits, shall give a reasonable estimate of the amounts claimed and the foundational facts/account statements in respect thereof along with any evidence, documentary and/or oral led by the parties to support such a claim of. The court shall consider the following factors as well

 

 

i. Lost profits suffered by the injured party;

 

ii. Profits earned by the infringing party;

 

iii. Quantum of income which the injured party may have earned through royalties/license fees, had the use of the subject IPR been duly authorized;

 

iv. The duration of the infringement;

 

v. Degree of intention/neglect underlying the infringement;

 

vi. Conduct of the infringing party to mitigate the damages being incurred by the injured party;

 

 

 

 

f) As per Rule 27 the Court may pass summary judgment, without the requirement of filing a specific application seeking summary judgment on principles akin to those contained in Order XIIIA, Code of Civil Procedure, 1908 as applicable to commercial suits under the Commercial Courts Act, 2015

 

 

g) As per Rule 33 the Court may direct the filing of written submissions in advance, prior to the date fixed for oral arguments. The Court may also fix specific timeslots and restricted time limits for oral arguments, as deemed appropriate

 

 

 

 

h) For Appeals

 

 

i. Appeals under Rule 2(d) of the present rules before the IPD shall be filed in the formats/ forms which are prescribed in Schedule I and within the period of limitation along with the required Court fees as prescribed in Schedule II.

 

ii. Appeals should consist of the Memorandum of parties, synopsis, list of dates, a brief memorandum of appeal, grounds of challenge in the appeal, the impugned order and affidavit of Appellant filing the appeal along with other details as required in the Form applicable. The Appellant shall disclose the details of any prior litigation pending between the parties with respect to the subject matter in dispute.

 

iii. If any additional documents are being file such documents shall be accompanied with an Application seeking leave of the Court, in which case principles similar to Order XLI rule 27 of the CPC, 1908.

 

iv. No evidence shall be recorded in Appeals unless the Court deems it necessary. However, the IPD may direct the appearance of any witness, who has deposed before the IPO for the purpose of seeking any clarification.

 

v. In all Appeals, all the contesting parties before the IPO shall be impleaded as Respondents along with the respective IPO. Filing of a reply would be only upon specific directions of the Court. The opposite party, during the course of hearing or otherwise would be entitled to produce copies of any relevant record intended to be relied upon.

 

vi. Reply, shall be filed within the period prescribed by the Court or within 60 days from the date on which the Court directs the filing of such Reply. Rejoinder to the reply shall be filed within the period prescribed by the Court or within 30 days from the date on which the Court directs the filing of such Rejoinder and filing of any further affidavits or pleadings shall be strictly done with the leave of the Court.

 

vii. Procedures applicable to Civil Appeals filed before the Single Judge: The Delhi High Court Rules and Orders, as also the practice directions, issued from time to time, to the extent there is no inconsistency with these Rules shall be applicable to appeals filed before the IPD.

 

 

i) Procedure for Original Petitions (Civil Original Petition)

 

 

i. Original petition shall consist of memorandum of parties, synopsis, list of dates and all other details specified in the respective forms and shall be accompanied by the affidavit of the Petitioner/party filing the petition.

 

ii. The parties shall file all relevant documents in support of the relief sought in the original petition. If interim orders are sought by the Petitioner, an application under Order XXXIX Rule 1 and Rule 2, CPC, 1908 shall be filed setting out the grounds for such interim order. Averments shall be made in the original petition specifying as to which of the documents filed form part of the record of the IPO.

 

iii. Original petitions filed before the IPD under the respective statutes shall be filed in the formats/ forms prescribed in Schedule I of the present Rules and within the period of limitation, as prescribed in the respective Act(s) along with the requisite Court fees prescribed in Schedule II.

 

iv. Original petitions shall be accompanied with all the relevant records from the respective IPO including the relevant correspondence. In case of an original petition relating to Patents, the complete specification of the patent along with different versions/ claims, as also the relevant forms filed before the IPO, shall also be filed.

 

v. Documents shall be read as part of the record, unless challenged by any party. Such challenge shall be raised at the very first instance i.e. in the Reply or Rejoinder along with an affidavit of admission/ denial. The admission/ denial of the said document(s) shall be conducted as per the Delhi High Court (Original Side) Rules, 2018. Denial of documents which is vague or without fair reason or cause would be liable to be penalized with costs.

 

vi. Framing of issues shall not be compulsory in the original petitions. In revocation/ cancellation petitions, the Court may frame issues if deemed necessary. Upon completion of pleadings, the Court may proceed to hear the petition finally.

 

vii. Filing of evidence may be directed by the Court, only if the same is deemed necessary. The evidence shall usually be in the form of affidavits. Oral evidence including cross-examination is directed by the Court, the procedure for recording of evidence and other related procedures shall be governed by these Rules as well as the Delhi High Court (Original Side) Rules, 2018.

 

viii. Reply, if so directed, shall be filed within the period prescribed by the Court or shall be filed within 60 days from the date on which the Court directs the filing of such Reply. Rejoinder to the reply shall be filed within the period prescribed by the Court or within 30 days from the date on which the Court directs the filing of such Rejoinder and filing of any further affidavits or pleadings shall be strictly done with the leave of the Court.

 

ix. In case of petitions seeking revocation/ cancellation, the Court may direct consolidation of the said petition with a suit for infringement involving the same IPR subject matter.

 

x. Procedures applicable to original petitions: The provisions of the Commercial Courts Act, 2015, Delhi High Court (Original Side) Rules, 2018 and orders as also the practice directions issued from time to time, to the extent there is no inconsistency with these Rules, shall be applicable to original petitions filed in the IPD.

 

 

j) Procedure for Civil Miscellaneous Main Petition (CM (Mains)) / Regular First Appeal (RFA)/ First Appeal from Order (FAO)/ Civil Revision Petition (CRP)

 

 

i. The CM (Mains)/ RFA/ FAO/ CRP challenging orders passed by the Commercial Courts or other district courts/civil courts, relating to IPR disputes shall be filed and listed before the IPD. The formats for the said petitions will be governed by The Delhi High Court Rules and Orders.

 

ii. The CM (Mains)/ RFA/ FAO/ CRP shall consist of the memo of parties, synopsis and list of dates and events, memorandum of the civil miscellaneous main petition, the grounds challenging the order, prayer/ the relief sought, affidavit and the impugned order.

 

iii. The petitioner shall file the relevant pleadings of the original proceedings, relevant order sheets, issues, if framed, in the case, pleadings in the relevant interim applications and documents which the petitioner intends to rely upon. Provided that every endeavour shall be made to place on record pleadings/documents (other than case law) referred to in the impugned order.

 

iv. Filing of a reply would be only upon specific directions of the Court, if the need arises. The opposite party shall, however, during the course of hearing or otherwise, be entitled to produce copies of any relevant record intended to be relied upon.

 

 

k) Additional Provisions for CM (Mains), RFAs, FAOs, and CRPs

 

 

i. It shall be sufficient if copies of the documents mentioned in Rule 9, Rule 10, Rule 11 and Rule 12 above are filed with self-certification of the counsel for the Petitioner/ Appellant to the effect that each such document is the true copy of its respective original in the file of the Trial Court.

 

ii. The Court may decide these Petitions and Appeals on the basis of the grounds rose in the Petition/ Memorandum of Appeal and the record filed with the same.

 

 

 

l) Rule 37 provides for Mediation and Early Neutral Evaluation