With the practices and processes in India returning to some semblance of normalcy ('normalcy' used very loosely) in 2022 after almost two years of pandemic-induced disruptions, the past year was quite eventful. The Indian Intellectual Property landscape witnessed some notable developments – in the realms of policy, practice and procedure as well as jurisprudence. In this article, we have summarized some of the key changes and developments to bring our readers up to speed with the prevailing legal scenario in India. Additionally, wherever applicable, we have also discussed lacunae / regressions that emerged in the year that went by, along with expected changes/trends for the coming year.

Key Policy Changes

1. New Intellectual Property Division and its rules at the Delhi High Court

Ever since the Intellectual Property Appellate Board (IPAB) was dissolved in mid-2021, there was uncertainty surrounding the way forward – both in terms of the fate of the matters pending before the (erstwhile) IPAB, as well as the expected processes and procedures of the successor forum.

While the picture surrounding this is still non finito, this year has seen significant progressions. The Delhi High Court ('DHC') created a first-of-its-kind carve out – the Intellectual Property Division – for the streamlining and adjudication of IP disputes, including matters that were pending before, and transferred from, the Delhi-branch of the erstwhile IPAB. To that end, the DHC notified its Intellectual Property Rights Division Rules on 24 February 2022. Since then, there has been a regular roster of judges at the DHC adjudicating pending and fresh IP matters, which has ushered in a relatively speedier conclusion of IP litigation at the DHC level.

Hot Take: The creation of a dedicated division for IP disputes at the DHC has not only resulted in the interpretational nuances of the applicable law coming to the forefront, but has also resulted in an uptick in the court's acceptance of actual damages being awarded in cases of IP infringement – including an increase in exemplary monetary damages, especially against habitual offenders.

Lacuna / Expected Changes in 2023: Matters that were pending before the erstwhile IPAB, in jurisdictions other than Delhi, are still in a state of limbo; similar developments should ideally take place in other courts/jurisdictions within India as well. This inference is supported by the changes already brought about by some of the other Courts in the minutiae of procedural aspects (for example, the fresh nomenclature system for IP matters introduced by the Calcutta High Court).

2. New Patent Rules before the High Court of Delhi

The DHC also notified the High Court of Delhi Rules Governing Patent Suits, 2022 with effect from 24 February 2022 with the aim of simpler, effective and efficient adjudication of patent suits filed under the Original jurisdiction of the DHC. These rules provide directions for the manner in which pleadings are to be submitted in patent suits, including the manner in which different claims have to be documented and presented before the court.

Developments in Jurisprudence

While there have been several notable cases (many emanating from the newly created IP Division at the DHC!), we're presenting here a select few to give readers an indication as to the jurisprudential trends with respect to IP matters in India. For ease of reading, the case laws in this section have been divided by subject matter.

A. Trade Marks

  1. Recognition of use of keywords as part of trade mark infringement and passing off1 - In the interim stages of a matter, the DHC held that invisible use of trade marks as keywords in the Google Ads Program can constitute infringement and passing off. While the case is still pending final adjudication (including on the interim order itself, which is currently under appeal), it will be interesting to see which way this goes.
  2. Declaration of Domain Name Registrars as 'Intermediaries'2 - Taking a strict stand on the issue of domain name registrars (located outside India) refusing to implement the decisions of Indian courts, the DHC declared domain name registrars as 'intermediaries' under the Information Technology Act, 2000 (IT Act) and directed them to comply with not only the orders passed by the courts in India, but also with the applicable rules under the IT Act.
  3. Recognition in rem of personality rights of Bollywood Star Amitabh Bachchan3 – In the interim stages of a matter, the DHC passed an omnibus order recognising and protecting personality rights of a popular Indian actor. The order in effect restrains the public at large from infringing the publicity or personality rights of the actor by misusing his name, voice, image or any other attribute that is exclusively identifiable with him, for any commercial or personal gain.

B. Patents

  1. Clarification of test for divisional applications4 - The DHC laid down the test for examining divisional applications for grant of patents. Referring to Section 16 of the Patents Act, 1970, the DHC stated that divisional application may be filed (i) in respect of an invention disclosed in the specification of an earlier parent patent application, and (ii) in the event there is no duplication of claims in the two specifications, i.e., the parent specification and the divisional specification.
  2. Recognition of Doctrine of Equivalence and decision on parallel importation5 – The DHC applied the concept of doctrine of equivalence to arrive at the finding of a prima facie case of infringement and dismissed the exemption of parallel import under Section 107A(b) of the Patents Act, 1970. The Court held that patents are territorial in nature and therefore, unless otherwise mandated by law, a patent protected outside India will not be recognized and protected in India, and the importation of any product which violates an Indian patent would not be allowed even if it is patented in any other jurisdiction.
  3. Clarification on appropriate jurisdiction in cases of appeals6 - Deciding on a set of clubbed matters, the DHC clarified the issue of 'jurisdiction' of High Courts in cases of revocation petitions and appeals, which had come to the forefront after the dissolution of the IPAB. The DHC clarified that the jurisdiction of courts would be determined on the basis of the 'office' where the patent application originates – even if per the internal mechanisms and functioning of the IP Offices, the actual office that conducted an examination of the patent application is different from the one where the application originated.

C. Copyright

  1. Copyright Infringement held to be a cognisable and non-bailable offence7 - The Supreme Court held that the offence of copyright infringement under Section 63 of the Copyright Act is cognisable and non-bailable, meaning that the accused can be arrested without a warrant and for which, bail will be per the discretion of the court of law. This decision has finally settled the debate and conflicting opinions on the issue coming out of different high courts.
  2. Court directed disclosure of information by an intermediary, even when the intermediary servers are located outside India8 - In a case before the DHC, the court – while recognizing its status as an 'intermediary' - directed Telegram to disclose details of persons operating channels containing infringing content on the platform. The court recognized that modern day smart phones would fall under the definition of a 'plate' as construed under the relevant provisions of the Copyright Act, 1957, and thus, seeking information on the owner of the channels is permissible. The court also dismissed Telegram's contentions on non-disclosure of information on account of its servers being in Singapore and the privacy law there.

Other Observations


Among the pool of positive developments, one regression that was notable this year was that of backlogs: the pandemic induced lockdowns have resulted in considerable backlogs at the IP Offices, resulting in delays in various steps in the prosecution process.

Expected Changes in 2023: The IP Office has already started taking steps to reduce the backlogs, including changes in the manner in which hearings were conducted (which sometimes resulted in procedural hurdles and consequently, further delays), and have also made themselves more accessible for stakeholders to present their grievances. With the creation of the IP Division at the DHC (discussed above) – which shares some limited overlapping powers with the IP Offices – the Courts have also started intervening with the aim of expediting matters by having some contentious cases (mostly relating to cancellation / rectification of trademarks) transferred from the IP Offices.

Boom in 'Metaverse' Trade Mark Registrations

2022 saw a rise in the number of registrations acquired for marks in relation to the metaverse at the Trade Marks Office.

Expectations in 2023: With the addition of digital goods like NFTs in the most recent edition of the International Classification of Goods and Services for the Purpose of the Registration of Marks (Nice Classification), registrations in relation to digital goods is also likely to see a boom.

Likelihood of Practice-related Procedural Changes

The past year gave an indication as to the impending practice-related changes at the IP Offices. These may include the possibility of a more stringent 'notarization' requirement for certain documents. While the expected changes are not codified or notified in a formal intimation yet, the past year witnessed an increase in the number of objections raised by the IP Offices on some procedural requirements.


1. MakeMyTrip India Private Limited vs. Booking.com B. V. & Ors. [CS (COMM) 268/2022]

2.Dabur India Limited & Ors. v Ashok Kumar and Ors [CS(COMM) 135/2022]

3. Amitabh Bachchan v. Rajat Nagi & Ors. [CS (COMM) 819 of 2022]

4. Novartis AG v. Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 12/2022

5. Sotefin SA v. Indraprastha Cancer Society And Research Center & Ors. [CS(COMM) 327/2021]

6. Dr. Reddys Laboratories Limited & Anr. Vs. The Controller of Patents & Ors. C.O. (CONN.IPD-PAT) No. 3/2021; Thyssenkrupp Rothe Erde Germany GMBH Vs. The Controller of Patents & Anr. C.O. (CONN.IPD-PAT) 1/2022 and Elta Systems Ltd. Vs. The Controller of Patents C.A.(COMM.IPD-PAT) 169/2022

7. M/s Knit Pro International v. The State of NCT of Delhi & Anr [Criminal Appeal No. 807 of 2022]

8. Neetu Singh and Anr. v. Telegram FZ LLC and Ors., CS (COMM) 282/2020

This article was originally published in the IP Newsletter of the International Law Office - www.lexology.com/commentary."

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