On September 20, the notification for the Calcutta High Court’s IP Division Rules were published in the Kolkata Gazette, making it the newest High Court, after Delhi and Madras, to have its own dedicated IP Division and relevant Rules. These Rules, officially called as “The Intellectual Property Rights Division Rules of the High Court at Calcutta, 2023”, (Cal HC IPD Rules or Final Rules) are drafted consequent to the abolition of the Intellectual Property Appellate Board via the Tribunal Reforms Act, 2021 (more on that here, here, and here). The Rules are notified almost 7 months after the publication of the draft Rules in December 2023, and published after another 1.5 months. The Calcutta High Court IPD Rules have a lot in common with its Delhi and Madras counterparts especially in terms of their institutional set up and procedural formalities. However, the three rules do differ from each other on some issues. To name a few :-
Court Fees: For filing an appeal against the order of the Trademark Registry and Copyright Office the Cal HC IPD Rules prescribe a fee of INR 5000, whereas the fees under the Del and Mad IPD Rules are INR 10000. Similarly, the fees for filing original applications/ petitions under the IT Act and Semiconductor Act is INR 10000 and INR 5000 respectively before the Cal HC, whereas no such fees are prescribed under the other two Rules.
Subject Matter: The Madras HC IPD Rules also adjudicate on the disputes arising out of enforcement by Custom authorities, whereas the Cal HC Rules don’t mention anything about these disputes.
Interventions by Subject Matter Experts: Unlike their counterpart from Delhi, the Cal HC IPD Rules, don’t specify if interventions by subject matter experts, in addition to the legal experts and counsels of the parties, would be allowed or not. In the past we have seen how crucial these interventions and explanations could be in technical IP disputes. While in my understanding any interested subject matter expert can still file an intervention before the Court, for clarity the Calcutta High Court could have adopted Delhi High Court’s approach and specify such interventions and engagements.
Difference between the Draft and Final Versions of the Rules
In addition to these dissimilarities between the IPD Rules of the three High Courts, the final draft of the Cal HC IPD Rules differ from the draft version on certain important aspects, discussed below:-
Making IP Litigation Accessible
One of the laudable amendments in the Rules is the inclusion of provision on accessibility and reasonable accommodation for disabled persons. We previously suggested the Court to introduce reasonable accommodation measures for persons with disabilities, in our suggestions/ comments on the draft Rules. It is heartening to see that necessary amendments have been made to accommodate these suggestions. Rule 29 of the final Rules state that the Intellectual Property Rights Division (IPRD) and the Intellectual Property Rights Appellate Division (IPRAD) may issue a direction, either suo moto or after a request, to provide reasonable accommodation for persons with disabilities recognized under the Rights of Persons with Disability Act, 2016. Additionally, the final Rules also direct, under Rule 15(a), that all the pleadings/ documents shall be filed electronically in a pdf format with optical character recognition (OCR) enabled. This is the second development in September, after the Karnataka High Court’s direction in Kalyan C. Kankanala v. Union of India that endeavours to limit the challenges faced by the PwDs in Indian IP prosecution and litigation.
Unfortunately, the copy of the final Rules available on the Calcutta High Court’s website is not OCR enabled and I hope that soon the same will be replaced with a more accessible version of the document.
Concerns about Translation
Previously, Rule 26 (b) of the draft Rules provided an option for translation through online translation software and indicatively named Google Translate and Bing Translate as examples.
As noted in our suggestions, allowing online platform translations risks the Court endorsing these tools and raises concerns about the authenticity of unverified translations. In the final Rules, though specific mention to Bing and Google translation software have been omitted, the Court has not specified the criteria which shall be used to determine the authenticity of the translations and instead shifts the onus on the other party to challenge the inaccuracy of the translations.
Another welcoming modification, which surely will be appreciated by IP practitioners, is that the Final Rules now allow service of pleadings to the other parties within 4 days instead of originally proposed 2 days.
For anyone interested in reading our comments on the draft Rules, which largely stand true for the final version of the Rules, the same is accessible here. In case I am missing out on any other important differences between the three Rules or between the final and draft versions of the Rules, please let me know in the comments below!