Summer Internship

SETTING UP OF DEDICATED IP
COURT IN INDIA
A Write-up Submitted
in Partial Fulfilment of the Requirements of
SUMMER INTERSHIP
By
SUDIP PATRA
Under the guidance of
Prof. TAPAS KUMAR BANNERJEE

to the
Sponsored Research and Industrial Consultancy

Indian Institute of Technology, Kharagpur
JULY-2016
1

TABLE OF CONTENTS
1.INTRODUCTION..3
2.EXECUTIVE SUMMARY4
3.KEY FINDINGS.4
4.KEY ISSUES AND CHALLENGES IN IP FIELD IN
INDIA.5
5.BENEFITS OF SPECIALISED IP COURTS
EXPERTISE7
6.POTENTIAL DOWNSIDES OF HAVING SPECIALISED
IP COURTS..10
7.CASE STUDIES.11
8.COMMERCIAL COURTS IN INDIA & CHALLEGES
REGARDING IP LITIGATIONS..24
9.CONCLUSION...25
1.INTRODUCTION

The Trade Related aspects of Intellectual Property Rights (TRIPS) Agreement

under the World Trade Organisation (WTO) came into effect in 1995 mandating
all the developing member countries to bring in TRIPS-compliant national laws
within ten years i.e. 2005. With patents featuring as one of the key issues,
TRIPS required the member nations to provide for patent protection, without
discrimination, for any invention (products or processes) in various elds of
technology, provided they pass the tests of novelty, inventiveness and industrial
applicability1
The TRIPS Agreement, among other issues, speci es enforceability and dispute
resolution procedures. The Agreement calls for protecting and enforcing IPR, in
a way that promotes technological innovation, transfer and dissemination to the
mutual advantage of producers and users.
In order to address the concerns of developing countries of possible misuse and
prevent IPR holders from charging exorbitant and commercially unviable prices
for transfer or dissemination of technologies, TRIPS Agreement incorporated
particularly Articles 7 and 8. Article 7 identi es that there is need for
.......transfer and dissemination of technology, to the mutual advantage of
producers and users of technological knowledge conducive to social and
economic welfare, and ... balance of rights and obligations2
In 2003 the International Bar Associations Intellectual Property and
Entertainment Law Committee conducted a major survey measuring the
existence and utilisation of specialised Intellectual Property (IP) courts or
tribunals and specialised judges in 85 jurisdictions around the globe. The survey
was launched and continues to be updated in response to the current high degree
of uncertainty faced by many owners of IP rights as a result of uneven outcomes
in enforcement actions and the increasing difficulty in enforcing such rights.
The overall objective of our survey is to determine, country by country, the
level of effectiveness of the judicial system in its ability to handle contentious
IP matters. An effective IP enforcement system which delivers efficient,
consistent and cost-effective decisions on disputed matters will benefit IP rights

1
2
http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm, Accessed 14th march, 2013

http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm, Accessed 14th march, 2013
owners, users and the IP community generally.

What became clear is that a limited number of jurisdictions have established
specialised IP courts, which adjudicate IP cases according to special rules of
procedure. Also, there are certain jurisdictions with informal IP judiciaries,
where IP cases are channelled to a group of one or more judges who have
developed expertise in the IP field3.
The Intellectual Property and Entertainment Law Committee has specifically
limited the scope of the survey to civil, commercial, and administrative courts
and has not addressed criminal courts.
It is for individual governments to provide an effective legal framework to
guarantee a strong and reliable legal basis for enforcement; expeditious judicial
and administrative processes, and to ensure availability of remedies for right
holders. 4It is our hope that this report will contribute to the analysis in this area
and make the enforcement of IP rights and the administration of justice more
efficient and responsive to various needs.
2. EXECUTIVE SUMMARY
The purpose of the survey is to provoke discussion and to contribute to the
analysis of arguments both advocating and criticising specialised IP courts for
the enforcement and adjudication of IP cases.
3.KEY FINDINGS
The survey identifies the lack of IP expertise in the judiciary as a major
problem for the enforcement of IP rightsin India.
There exists a trend in the IP field of either creating specialised courts or
setting up specialised divisions for IP matters within courts of general
jurisdiction.
The survey finds that jurisdictions that have created specialised IP courts are
significantly in the minority. In jurisdictions in which there are no specialised IP

3
4
Ibid,p14
Study on Specialized Intellectual Property Courts, Hon. Nicholas Ombija,p12
courts, practitioners were overwhelmingly in favour of the creation of such

courts.
The survey indicates that a small number of courts (1-3) having jurisdiction
over IP matters seems preferable.
The survey illustrates that a specialised IP court model that is effective in one
jurisdiction may not work in another. Factors such as local customs and
practices, IP caseloads, number of judges, budgetary concerns and local
procedural issues, among others, have contributed to the existence of different
types of specialised IP courts established thus far.
The survey shows that in some jurisdictions, there are specialist areas in which
the courts use panels to hear specific types of IP cases.
4.KEY ISSUES AND CHALLENGES IN IP FIELD IN INDIA
on intense interaction with stakeholders, it was realised that the key issues in
patent administration include pendency, access to information, challenges with
respect to enforcement. One of the main reasons cited for low pendency is due
to the high workload of examiners to examine applications. India clearly has
more work load than many other countries and regions like US and Europe even
though number of applications in India is marginal as compared to other two
regions5. In case of Japan the work load on patent examiners are even higher
than India, but Japan has outsourced most of the prior art search work to thirdparty vendors. Examiners are not only assigned the task of examination but also
administrative tasks like conducting patent agent exam, training sessions, and
similar tasks. There has however been some improvement with hiring of
examiners and this might improve the pendency ratio. Currently filling of patent
applications is allowed electronically and does not allow the electronic facility
to le for responses to the objections raised by the IP office6. As a result those not
residing in the location where branches of patent of ces are set up, causes them a
great issue as they have to either travel down to that place to communicate with
examiners or hire some attorneys located in those areas7.
So, do we need specialist adjudicators, at least in so far as complex patent
infringement disputes are concerned? It is likely that an adjudicator with some

5

Ibid,56
7
Ibid,56
6
familiarity with the issue will foster expedited hearings, reduced costs for
litigants, improved precision and greater predictability.
Assuming we need specialist adjudicators, here are some options:
1. We could formalize existing informal arrangements at select Indian courts,

where IP specific benches are formed. As it stands now, the highest volume of
patent litigation is spread across courts in 5 cities: New Delhi, Chennai,
Mumbai, Kolkata and Gujarat. Therefore, specialist benches could be instituted
at each of these courts.
The advantage of this approach is that the specialist benches fall within the
overall framework of regular courts, necessitating no amendments to Indian
law. However, in order for this to work well, one must devise appropriate
eligibility criteria for such judges. Secondly, the judges must be given intensive
IP training. Lastly, it must be ensured that these judges sit on the IP bench for a
significant period of time, without being made to rotate every 2-3 years8.
A recent Commercial Division of High Courts Bill, 2009 sought to foster
speedy adjudication of high value disputes by setting up dedicated
commercial benches in every High Court to hear commercial disputes
including IP disputes valued at Rs 5 Crores or higher.
2. Alternatively, a distinct IP court or tribunal could be created, such as the
Court of Appeals for the Federal Circuit in the US or the Patents Court/Patents
County Court in the UK. Given that India already has a specialist IP tribunal
(IPAB), one could simply expand its jurisdictional purview to include
infringements as well. As noted earlier, the key issue is that IPAB suffers from
serious design flaws and is currently the subject of a constitutional challenge
before the courts9.
The challenge alleges that the IPAB is not sufficiently independent of the
executive; the qualifications for the appointment of judicial members on the
board are contrary to the law of the land; and that irregular appointments have
been the norm rather than the exception10. If such infirmities were remedied in

8

Ibid,67
10
Ibid,76
9
future, could the IPAB offer scope for the vesting of specialist IP adjudicatory
functions?
5.BENEFITS OF SPECIALISED IP COURTS
EXPERTISE
Judges may produce more reasoned and practical decisions owing to their
experience in IP issues11. The fact that the specialist judge is familiar with the
particular area of law will frequently enable the court, at an early stage, through
case management at a directions hearing, to ensure that only the core issues are
pursued and, if necessary, that discovery is tailored to the particular case. The
judge may, in the more informal atmosphere of this particular process, express
some preliminary views about the overall merits of the case, and this may point
the way to a settlement or a reduction in the number of matters at issue12.
Consistency of legal doctrine in the IP field. This comprehensive
understanding of and familiarity with the surrounding case material can be
expected to provide greater consistency in the decision-making process and
should bring with it the advantage to the litigants of a more predictable outcome
of the proceedings. Consistency in decision-making is of extreme importance.
Inconsistency in decision-making leads to a lack of confidence in the system
and court authority will diminish.
Dynamism. IP courts are more able to keep up with new IP issues and laws.
As many IP laws are subject to constant evolution, judges and lawyers should
be able to rapidly assess the new amendments and apply the changes.
Constantly evolving subject matter, such as IP law, requires expertise in the
field in order to make it work.
Specific training in IP issues is more attainable as expertise and resources are
concentrated within the judiciary.
Creation of a corpus of specialist advocates. The creation of a specialist court,
provided that it has a sufficient volume of work, can be expected to be
accompanied by the development of a body of specialist advocates. They will

11
Robert M Sherwood, Specialised Judicial Arrangements for Intellectual Property, 1998

International Survey of Specialised Intellectual Property Courts and Tribunals by INTERNATIONAL BAR
ASSOCIATION INTELLECTUAL PROPERTY AND ENTERTAINMENT LAW COMMITTEE,p45
12
either be in existence at the time when the court is created or they can be
expected to evolve to meet the needs of the court.
EFFECTIVENESS
Quicker and more effective decision-making process. The time that otherwise
would be lost in dealing with aspects of the case in order to educate the judge
will be saved, thereby shortening hearings and reducing costs for litigants,
courts, and administrative staff. Specialisation theoretically reduces delay
because judges become familiar with the case patterns and the legal issues
raised by the cases before them. Judges who hear the same types of cases
regularly come to recognise fact patterns and issues more quickly and
accurately than those who encounter cases only occasionally. As a result, they
can control the lawyers more easily, see possibilities for settlement, and write
better decisions. Their increased opportunity to see trends may also put them in
a better position than judges who see a mix of cases to develop the law to suit
evolving conditions13.
Better understanding of IP issues by judges. Even though each case would
have a different technology at issue, specialised judges would be more efficient
at resolving IP cases through their consistent exposure to the substantive law.
Establishment of rules and procedures that are unique to IP issues in nature, ie
appointing associate judges, technical experts or assessors to assist and provide
technical knowledge. Difficult questions of scientific fact are likely to arise
more frequently in patent law than in any other field of law14.
Reduced risk of judicial errors, which contributes to the effectiveness of the
administration of justice.
Reduced caseload. Specialist courts reduce the caseload of overburdened
generalist courts15. If a rash of cases in a specialist field emerges at a particular
time, or if, for example, there is new legislation in the particular field requiring
thorough interpretation by the court, then the specialist court will relieve the
general court of this burden and thereby ensure that the stream of litigation is

13
ASSOCIATION INTELLECTUAL PROPERTY AND ENTERTAINMENT LAW COMMITTEE,p35.
14
Ibid,54.
15
Ibid,65
not impeded.
EFFICIENCY
IP courts are more likely to manage the challenges of complex IP cases more
efficiently and more precisely
Appeals may be made directly to the highest court, bypassing the courts of
appeal.
More cost effective due to efficiency and faster adjudication of cases.
As many IP rights have acquired a multinational aspect, judicial cognisance of
judicial findings in other jurisdictions may be recognised and relied on by
specialised IP courts while generally not permitted in general courts16.
Court proceedings may be shortened as exhibits and experts may be
unnecessary.
6.POTENTIAL DOWNSIDES OF HAVING SPECIALISED IP COURTS
Costs of maintaining IP courts may be high.
Costs of training judges, court personnel, and public prosecutors may be high.
A lack of a substantial caseload may not justify the creation of specialised IP
courts in certain jurisdictions.
A local presence may not be possible by specialised IP courts and therefore
inaccessible to some.
Repeat litigators know judges well and are well acquainted with the
eccentricities of the specialised courts rules, therefore putting one-time litigants
at a disadvantage
Loss of generalists overviews. Generalist judges come to cases without
preconceptions and are able to apply fresh perspectives to the problems at hand.
This suggests that the particular skill a judge brings to the court is his or her
ability to attach appropriate weight to the facts and to make a judgment on such

16
assessment17.
Informality. This means the kind of familiarity among those administering
justice may lead to undue reduction of formality.
Isolation. The creation of a specialised court carries with it the risk that it may
lead the particular area of law in a direction away from the development of the
general law.
Overlap with other areas of law. This is the case where, for example, an IP
case, whether relating to patent, trademark or other matters, raises, outside the
specific issue of IP, questions of contract. This situation may require a
generalist judge to try the whole case, rather than a specialist judge, who might
be tempted to develop inappropriate general principles of law to meet his or her
particular view.
Geographical availability. Specialised courts will usually require long-distance
travel either by the judges or the parties. This will inevitably increase costs.
7.GROUNDS UPON WHICH TO DECIDE THE APPROPRIATENESS
OF IMPLEMENTING SPECIALISED IP COURTS
It seems that specialised IP courts are not always making a difference,
especially in developing countries. This is not, however, the situation we want
to maintain. Studies also show that current deficiencies can be remedied and
that a thriving and properly functioning specialised court starts with substantial
reform of the whole legal and procedural system in a given country18.
Do problems in the particular area disclose a genuine need for a specialised
court? How have the problems been dealt with before the courts?
Is the current court system failing to provide an effective enforcement
mechanism for IP rights holders? If so, what are the concerns with the current
system?
Has there been any important legislation that has prompted or will prompt an
increase in the number of cases being litigated in this area over a period of
time?

17
18
Ibid,p65
10

Are the general courts experiencing a backlog in regard to this particular area
of law?
Is the volume or potential volume of work in this area sufficient to justify the
creation of a specialised court?
How will the centralisation of a specialised court affect the practicalities of
litigation?
How will the creation of a specialised court in this area affect the quality of
justice in general courts?
8.CASE STUDIES
THAILAND
The Thailand Intellectual Property and International Trade Court (IP&IT Court)
is a good example of a specialised court with increased expertise, effectiveness
and efficiency. The Central IP&IT Court has its own procedure specially
created to handle IP cases effectively. Attempts to redress delay are reflected in
several provisions: for example, the so-called full day and continuous hearing,
which requires the court to proceed with the hearing without adjournment; and
the leap-frog procedure, where appeals lie directly to the IP&IT Division of
the Supreme Court.19
Career judges in the IP&IT Court have special training in IP or international
trade. In addition, there are lay judges who have specific expertise in particular
areas of intellectual property or international trade.20
Also, cases move through the IP&IT courts quicker than they would in the
General Courts and hearings are usually held without adjournment until
judgment is rendered.21
Consequently, trials in the IP&IT courts are usually completed within 12
months. If IP&IT court decisions are appealed to the Supreme Court, it may
take another 8-12 months.

19
Akarawit Sumawong, Infringement Cases Relating to Industrial Property Rights under the Central Intellectual
Property and International Trade Court in Thailand, available at
www.jpo.go.jp/torikumi/mohouhin/mohouhin2/kanren/pdf/a_suma.pdf
20
Tilleke & Gibbins International Ltd The Thai Court System, Thailand Legal Basics, at 12, March 2003, available
at www.tginfo.com/publications/thailand_legal_basics/thai_court_system.pdf
21
Katharine A. Bostick, Perspectives From Industry-Judicial Enforcement in Developing Countries, available at
www.iipi.org/activities/forums/IPCourts/Presentation%20- %20Bostick.pdf
11

The IP&IT Court was established with the goal of being a user-friendly forum
that has specialist expertise in order to serve the needs of Thai commerce and
industry22.
UNITED KINGDOM
The United Kingdom has the Patent Court of the High Court (PCHC) that began
hearing patent actions centuries ago. In addition to the PCHC, there is the
Patents County Court (PCC) which is a relatively new innovation, having been
established in 1990 to provide an alternative to the High Court in response to
perceived problems of cost, delay and complexity23.
The High Court of England and Wales has three divisions, two of which are the
Chancery Division, which hears all IP actions, and the Queens Bench Division,
which also has jurisdiction to hear copyright and confidential information
actions (the third being the Family Division).
The following are features of the PCC that contribute to its aims of catering to
the needs of small and medium-sized firms and private individuals in litigating
IP rights:
The PCC judge holds case management conferences for every case to establish
the future conduct of the case. The judge explains difficulties of IP litigation to
litigants and advises them of the option of mediation.
A streamlined court procedure was introduced to reduce costs and trial time of
IP litigation.This procedure, about which lawyers are required to inform their
clients, is subject to an Order of the Court.A streamlined procedure case will not
have any discovery or experiments and cross-examination is limited.
There is no limitation on the jurisdiction of the PCC by virtue of the
complexity of the law or the facts.
It has special jurisdiction to deal with all matters relating to patents and
registered designs, together with claims or matters that are ancillary to or arise
out of such proceedings.
Patent agents have the right of audience before the PCC.

22
Ibid.
23
12

A pro bono unit manned by specialist barristers, solicitors, and patent agents
serve the needs of litigants with limited resources.
INDIA:
As far as India concerned,the following statistical data in patet law cases in the
High Courts & appeals,it can be seen that average time take to dispose of cases
ranges four to dive years.The following are all the cases that has been dfiled in
the High court of Calcutta ,Madras,Bombay,Delhi ,Supreme court after 1st
Jan,2013 till date.The rate of disposal of cases is suprisingly low,because in the
technology related to patent 4 years is a huge amount of time wintin which a lot
of advancement may happen in that particular technology.So,only providing
injunction does not help to recover the pecuniary damage24.
Recent USTR's Special 301 Report & India's Priority Watch list status also talks
about that & ranks India 36 among 38 watched countries25. Here some of the
stat tical highlights as follows:
KOLKATA HIGH COURT DECISIONS AFTER 1/1/2013 ALONG WITH
ORIGINAL SUIT FILLING DATE
1. Rajesh Kumar Banka vs . The Union of India and Ors . ( 12 . 11 .
2014 - CALHC )
2. Decision Date: 12.11.2014.
IN THE HIGH COURT AT CALCUTTA Constitutional Writ Jurisdiction
Appellate Side W.P. No. 19610 (W) of 2011.
MADRAS HIGH COURT DECISIONS AFTER 1/1/2013 ALONG WITH
1. S . P . Chockalingam vs . Controller of Patents and Union of India ( 15 .
03 . 2013 - MADHC )
Decision Date: 15.03.2013.
IN THE HIGH COURT OF JUDICATURE AT MADRAS.
DATED :
15.03.2013.

24
25
Ibid,p65
13

QURAM :THE HONOURABLE MR.JUSTICE S.TAMILVANAN.

W.P.No.8472 of 2006.
2. Novartis AG Lichtstrasse vs . Union of India and Ors . ( 28 . 07 . 2015 MADHC )
Decision Date: 28.07.2015
CIVIL APPELLATE JURISDICTION CIVIL APPEAL Nos. 2706-2716 OF
2013 (ARISING OUT OF SLP(C) Nos. 20539-20549 OF 2009)
4. F . Hoffmann - La Roche Ltd . and OSI Pharmaceuticals , LLC . vs .
Intas Biopharmaceuticals Limited ( 30 . 04 . 2013 - MADHC )
O.S.A.Nos.36 and 37 of 2012
O.S.A.No.36 of 2012
Prayer in O.S.A.No.37 of 2012: Original Side Appeal filed under Order XXXVI
Rule 9 of Original Side Rules read with Clause 15 of Letters Patent, against the
order, dated 12.12.2011, passed in O.A.No.514 of 2011, in C.S.No.408 of 2011.
5. Jagdale Industries Limited represented by its Company Secretary
Ganapati R . Hebbar vs . Halewood Laboratories Pvt . Ltd . and Others (
12 . 04 . 2013 - MADHC )
O.S.A.No.235 of 2012
Prayer: Original Side Appeal filed under Order XXXVI Rule 9 of Original Side
Rules read with Clause 15 of Letters Patent, against the order, dated 13.12.2011,
passed in Application No.4998 of 2011 in C.S.D.No.30620 of 2011.
6. M . C . Jayasingh vs . Mishra Dhatu Nigam Limited ( MIDHANI ) rep .
by its Managing Director , ( 23 . 01 . 2014 - MADHC )
Civil Suit No.562 of 2007
7. Bharat Bhogilal Patel vs . Union of India ( 08 . 10 . 2014 - MADHC )
14


Writ Petition Nos.18565 & 18566 of 2012
9. Dr . Aloys Wobben vs . Intellectual Property Appellate Board , Enercon (
India ) Limited and Controller of Patents , Designs and Trade Marks ( 20 .
09 . 2013 - MADHC )
W.P. Nos.17539 to 17541 of 2011
W.P.Nos.31133 to 311135 of 2013
and WP.No.31137 of 2013
Petition filed under Article 226 of the Constitution of India, praying for the
issuance of a writ of Certiorarified Mandamus, to call for the records of the
order dated 02.12.2010 passed by respondent No.1 in ORA.No.19/2009/PT/CH
pending disposal of this Writ Petition.
10. Bajaj Auto Limited vs . TVS Motor Company Limited ( 28 . 03 . 2016 MADHC )
CIVIL APPEAL No. 6309 of 2009
(Arising out of S.L.P.(C) No.13933 of 2009)
11. Duro Flex Pvt . Limited vs . Duroflex Sittings System 150 ( 04 . 12 . 2014
- MADHC )
Original Side Rules read with Clause 15 of the Letters Patent against the order
dated 29.08.2007 in A.No.322 and 323 of 2007 in C.S.D. Nos.36297 and 36288
of 2006.
12. Nissan Motors India Private Limited ( NMIPL ) vs . The Competition
Commission of India ( CCI ) ( 30 . 06 . 2014 - MADHC )
W.P.Nos. 31808 and 31809 of 2012:
Petition filed under Article 226 of the Constitution of India.
15

Prayer in W.P.No.31808 of 2012 is: for the issuance of a writ of Prohibition

restraining the first Respondent from continuing the impugned proceedings in
Case No.03/2011 in File No.1(3)/2011-Sectt dated 26.04.2011
13. Bilcare Limited vs . Associated Capsules Pvt . Ltd . , Controller of
Patents & Designs , The Assistant Controller of Patents & Designs and
Intellectual Property Appellate Board ( 12 . 07 . 2013 - MADHC )
14. NTT Docomo Inc . vs . Assistant Controller of Patents and Designs ( 28 .
03 . 2014 - MADHC )
W.P.No.6594 of 2013
Petition under Article 226 of the Constitution of India, praying for the issue of a
Writ of Certiorarified Mandamus, calling for the records relating to the
communication of the 1st respondent dated 14th December 2012 made in Patent
Application No.4851/CHENP/2007/VAA/CNA
15. S . M . Anand Vel vs . Union of India and Ors . ( 20 . 07 . 2015 MADHC )
W.P.No.4662 of 2014
& M.P.No.2 of 2014
PETITION under Article 226 of The Constitution of India praying for the
issuance of Writ of Certiorarified Mandamus to call for the records relating to
the Order of the fourth respondent dated 09.03.2012 relating to Patent
Application No.2519/CHE/2007 on the file of the third respondent,
16. Bharat Balar and Ors . vs . Rajendra Distributors and Ors . ( 17 . 03 .
2015 - MADHC )
O.A. No. 861 of 2014
17. Venkatraman Das vs . V . N . S . Innovations Pvt . Limited , M / s . M . S
. Medicals and The Controller of Patents ( 19 . 03 . 2014 - MADHC )
16


CS.No.19/2006
BOMBAY HIGH COURT DECISIONS AFTER 1/1/2013 ALONG WITH

1. Darius Rutton Kavasmaneck vs . Gharda Chemicals Limited and Ors . (
07 . 04 . 2015 - BOMHC )
APPEAL NO. 54 OF 2015
IN NOTICE OF MOTION NO. 3567 OF 2011
IN SUIT NO. 2932 OF 2011
2. Darius Rutton Kavasmaneck vs . Gharda Chemicals Limited ( 12 . 12 .
2014 - BOMHC )
RDINARY ORIGINAL CIVIL JURISDICTION
CHAMBER SUMMONS NO. 669 OF 2012 IN SUIT NO. 2932 OF 2011
3. Bayer Corporation vs . Union of India ( 15 . 07 . 2014 - BOMHC )
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
WRIT PETITION NO.1323 OF 2013
4. CTR Manufacturing Industries Limited vs . Sergi Transformer
Explosion Prevention Technologies Pvt . Ltd . and Ors . ( 23 . 10 . 2015 BOMHC )
17


2012
IN
SUIT NO. 448 OF
5. Tata Engineering and Locomotive Co . Ltd . vs . State of Maharashtra (

30 . 01 . 2015 - BOMHC )
Section 28 Trade Marks Act 1999
Decision Date: 30.01.2015ORDINARY ORIGINAL CIVIL JURISDICTION
SALES TAX REFERENCE NO. 16 OF 2003
WITH SALES TAX
REFERENCE NO. 3 OF 2008
6. Lupin vs . Johnson and Johnson ( 23 . 12 . 2014 - BOMHC )
NOTICE OF MOTION
(L) NO. 2178 OF 2012 IN SUIT (L) NO.1842 OF 2012
7. Teijin Limited vs . Union of India through the Secretary ( 10 . 02 . 2014 BOMHC )
IN THE HIGH COURT OF JUDICATURE AT BOMBAY .
1258 OF 2011.
WRIT PETITION NO.
SUPREME COURT DECISIONS AFTER 1/1/2013 ALONG WITH

1.Dr. Aloys Wobben and Anr.Vs. Yogesh Mehra and Ors.
Civil Appeal No. 6718 of 2013,first such suit (bearing No. 1349 of 2009).
Decided On: 02.06.2014.
2. Novartis AG vs . Union of India ( UOI ) and Ors . ( 01 . 04 . 2013 - SC )
CIVIL APPEAL Nos. 2706-2716 OF 2013 (ARISING OUT OF SLP(C) Nos.
20539-20549 OF 2009)
18


Following diagram shows no of patent cases in four high courts after
01/01/2013 & no of appeal cases in the high court & SC.
19

The following diagram show average pendency in the four high court &
Supreme Court court.
Following are the bar chart of copyright cases after 01/01/2013:
20

21

22

8.COMMERCIAL COURTS IN INDIA & CHALLEGES REGARDING

IP LITIGATIONS
The Commercial Courts, Commercial Division and Commercial Appellate
Division of High Courts Bill, 2015 was introduced in Lok Sabha on December
7, 2015 by the Minister for Law and Justice, Mr. D.V. Sadananda Gowda. The
Bill enables the creation of commercial divisions and commercial appellate
divisions in high courts, and commercial courts at the district level.
Commercial dispute: A commercial dispute is defined to include any dispute
related to transactions between merchants, bankers, financiers, traders, etc. Such
transactions deal with mercantile documents, partnership agreements,
intellectual property rights, etc.
Specified value of a dispute: The specified value of a commercial dispute that
will be dealt with by commercial divisions in high courts and commercial courts
will be an amount not below one crore rupees, and will be specified by the
central government.
23

Commercial courts at the district level: State governments may set up

commercial courts, equivalent to district courts, after consulting with their
respective high courts. However, a commercial court must not be set up in an
area where the high court exercises ordinary original civil jurisdiction.
Commercial divisions in high courts: Commercial divisions may be set up in
those high courts which exercise ordinary original civil jurisdiction, that is, the
High Courts of Delhi, Bombay, Calcutta, Madras and Himachal Pradesh. They
will be set up by the Chief Justice of that particular High Court.
Commercial appellate divisions: Commercial appellate divisions may be set
up in all high courts to hear appeals against: (i) orders of commercial divisions
of high courts; (ii) orders of commercial courts; and (iii) appeals arising from
domestic and international arbitration matters that are filed before the high
courts.
Appointment of commercial court judges: Judges to a commercial court will
be appointed by the state government after concurring with the Chief Justice of
the concerned high court. These judges will be appointed from the cadre of the
higher judicial service in the state, and have experience in dealing with
commercial disputes.
Nomination of high court judges to the commercial divisions and appellate
divisions: The Chief Justice of the High Court will nominate those high court
judges with experience in commercial matters to be judges of the commercial
division and appellate division of that High Court. The commercial divisions
will comprise of one or more Benches consisting of a single judge. The
commercial appellate divisions will comprise of one or more benches consisting
of two judges.
Filing and disposal appeals: Appeals to the commercial appellate division
must be made within a period of 60 days of the order of the lower court. The
commercial appellate division is to endeavor to dispose of appeals within a
period of six months.
Infrastructure and training: The state government must provide the necessary
infrastructure for the working of the commercial court or commercial division
of a high court.
Transfer of pending suits: All suits of a value of Rs one crore or more that are
24

pending in the high court shall be transferred to the commercial division, after it
is constituted.
CHALLENGES OF REDRESSAL OF IP LITIGATIONS BY

COMMERCIAL COURT
1.Lack of expertise skills by the judges regarding solving of the IP related issue.
2.Less technical knowledge to understand patent related issue.
3.No clear jurisdiction is provided about IP litigation.
4.No special provision redarding apppointment of specilized judges relating to
the IP matters etc.
9.CONCLUSIONS
In conclusion, the time seems right for the development of specialised IP courts.
It will be interesting to see the directions taken by various legal systems as they
deal with the continuing problems of specialisation and lack of resources. It
should be stressed, however, that different circumstances prevail in different
jurisdictions (economic and political considerations, status of legislation, legal
and procedural traditions, other priorities, etc). Economies in some jurisdictions
may not justify the establishment of any specialist court26.
IP law has become a specialised and globalised area of law that requires a
specialised IP judiciary and a specialised IP procedural regime. Additionally,
emerging technology issues and the development of e-commerce may tend to
redefine the role of the judge in a wide range of IP related cases. IP is
particularly affected by rapidly evolving technology related issues. Therefore,
the more complex technology gets the more urgent the need is for specialist
judges with expertise in IP cases. It is not a good use of judicial resources to
assign a judge who has had mainly family or criminal experience when in
practice or on a lower Court Bench to an IP case27. The all judges are equal
principle is laudable in principle, but some may say not very sensible when
dealing with specialist areas such as IP.

26
27
Ibid,63
25

The survey confirms the existence of a large number of jurisdictions that have
contemplated the potential of specialised IP courts for the enforcement and
adjudication of IP rights.
The survey set out to identify core findings about enforcement-related issues in
connection with IP rights that could, in turn, provide a factual basis for
discussion. We feel that we have achieved this aim. It is for governments to take
measures in order to speed up legal proceedings relating to IP and, in particular,
to establish specialised courts or equip major District Courts with specialised
sections having jurisdiction on IP matters28. The reorganisation of the local
court system is not a purely administrative matter; it often requires the direct
involvement of government to create such courts. Since specialised courts will
give judges the chance to deal mainly or exclusively with IP disputes, they will
create the opportunity to strengthen expert knowledge on the matter and,
consequently, will shorten the length of the courts procedure.So,Now it is the
perfect time to set up dedictaed IP court in India because with all kingd od
initiatives taken by the government from Make In India to Start up India it is
very important to set up dedicated Ip court to provide impetus for the
development of India

28
26

REFERENCES:
1. A paper on International Survey of Specialised Intellectual Property
Courts and Tribunals by INTERNATIONAL BAR ASSOCIATION
INTELLECTUAL PROPERTY AND ENTERTAINMENT LAW
COMMITTEE
2. Robert M Sherwood, Specialised Judicial Arrangements for Intellectual
Property, 1998
3. Akarawit Sumawong, Infringement Cases Relating to Industrial Property
Rights under the Central Intellectual Property and International Trade
Court in Thailand
4. Tilleke & Gibbins International Ltd The Thai Court System, Thailand
Legal Basics, at 12, March 2003
5. Katharine A. Bostick, Perspectives From Industry-Judicial Enforcement
in Developing Countries
27

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SETTING UP OF DEDICATED IP

Under the guidance of

Prof. TAPAS KUMAR BANNERJEE

Sponsored Research and Industrial Consultancy

The Trade Related aspects of Intellectual Property Rights (TRIPS) Agreement

http://www.wto.org/english/tratop_e/trips_e/intel2_e.htm, Accessed 14th march, 2013

owners, users and the IP community generally.

courts, practitioners were overwhelmingly in favour of the creation of such

Study on Specialized Intellectual Property Courts, Hon. Nicholas Ombija,p22

1. We could formalize existing informal arrangements at select Indian courts,

Study on Specialized Intellectual Property Courts, Hon. Nicholas Ombija,p34

Robert M Sherwood, Specialised Judicial Arrangements for Intellectual Property, 1998

QURAM :THE HONOURABLE MR.JUSTICE S.TAMILVANAN.

Decision Date: 08.10.2014

Prayer in W.P.No.31808 of 2012 is: for the issuance of a writ of Prohibition

Decision Date: 19.03.2014

BOMBAY HIGH COURT DECISIONS AFTER 1/1/2013 ALONG WITH

ORDINARY ORIGINAL CIVIL JURISDICTION

SUIT NO. 448 OF

5. Tata Engineering and Locomotive Co . Ltd . vs . State of Maharashtra (

WRIT PETITION NO.

SUPREME COURT DECISIONS AFTER 1/1/2013 ALONG WITH

Decision Date: 01.04.2013.

Following are the bar chart of copyright cases after 01/01/2013:

8.COMMERCIAL COURTS IN INDIA & CHALLEGES REGARDING

Commercial courts at the district level: State governments may set up

CHALLENGES OF REDRESSAL OF IP LITIGATIONS BY

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