This article is written by Subha Sattwa Bandyopadhyay, pursuing a Certificate Course in Advanced Criminal Litigation & Trial Advocacy from LawSikho.com.

Introduction

Intellectual Property Rights are exclusive legal rights that are granted to a person for their invention or discovery relating to any literary, artistic work for a particular period of time. These types of rights are protected in intellectual property for Trademark, Copyright etc. When there is a violation or infringement of any such right by any person other than the one to whom the exclusive right belongs the person can sue the infringer for criminal remedies which are discussed elaborately in this article. Now let us discuss what falls within the ambit of IP violation.

What falls within the ambit of IP violations

Within the scope & ambit of IP violations following are the types of intellectual property which are being protected. When any of the following rights are infringed upon by individuals, several recourses can be taken, some of which include criminal prosecution.

1. Copyright- protects artistic, literary, musical, dramatic work;
2. Trademark- distinguishes one brand from another by way of distinct logos, marks, colours and patterns;
3. Patent- protect innovations.;
4. Design- protects new and original designs which are applied to a particular product manufactured by Industrial processes.

In the course of my article, I will be focusing on criminal prosecution of Copyright & Trademark violations. Let us discuss now what are the statutes dealing with criminal prosecution for IP violation.

Statutes dealing with criminal prosecution for IP violations

• Trade Marks Act, 1999

The proprietor of the trademark under the Trademark Act 1999 has the option to initiate criminal prosecution against the infringer under section 103 & 104 of the Trade Marks Act. Section 103 & 104 applies for penalty in case of false application of trademark & selling of goods & services to which such false trademark & or false trade description applies. An offense for infringement of trademark is punishable with an imprisonment of not less than six months but which may extend to three years. The minimum fine which shall not be less than fifty thousand rupees but may extend upto Rupees 2,00,000/-.The court may though for adequate & special reason to be mentioned in judgment impose a sentence of imprisonment for a term less than six months or fine of less than fifty thousand rupees. Now let us discuss the direct complaint before the police & before the magistrate.

• Direct complaint before the Police

Under Section 115 of the Act the procedure for filing a direct complaint before the police for infringement of trademark is provided. Under such section, any police officer not below the rank of Deputy Superintendent of Police or equivalent, if satisfied that any of such offenses has been committed, shall search & seize without warrant, any goods, die, block, machine, plate or other instrument or things involved in committing the offense.

• Complaint before Magistrate

In order to initiate criminal proceedings against the infringer the proprietor should file a criminal complaint under section 156 of Code of Criminal Procedure, 1973. In case of refusal of FIR by police, the proprietor can file a complaint to the magistrate under section 190 of the code. No court inferior to that of Metropolitan Magistrate or Judicial Magistrate First Class shall try offenses under such Act. Now let us discuss the Copyright Act, 1957.

• Copyright Act, 1957

Under Chapter XIII of the Copyright Act, penal provisions are provided. Under Section 63 of the Act the punishment for infringement of copyright is provided. An offense for infringement of copyright is cognizable & non bailable. For infringement of copyright, the punishment is imprisonment of not less than six months but which may extend up to three years. The minimum fine for which is 50,000 but which may extend upto 2,00,000 rupees. Provided that the court may for adequate & special reason to be mentioned in the judgment impose a sentence of imprisonment for a term of less than six months or fine of less than fifty thousand rupees. Now let us discuss the direct complaint before the police & before the Magistrate.

• Direct Complaint before the Police

Under Section 64(1) of the Act any Police Officer not below the rank of a sub inspector has the power to seize without warrant any infringing copies of work, plates etc & produce before the Magistrate.

• Complaint before the Magistrate

Like in the Trade Mark Act under the Copyright Act a complaint can be filed against the infringer under section 156 of Code of Criminal Procedure to the police or before the magistrate under section190 for initiating investigation under section 156(3). Now let us discuss the Exit options.

• Exit options

The lack of exit options under criminal prosecution is one of the main reasons for the proprietors to not opt for the same. However the situation of the courts have completely been changed & now the courts are becoming more aware in settling the criminal matters which can be described below-

• Quashing/ Writ Petition

As the offenses under the TradeMark & Copyright Act are grave & serious in nature the same cannot be settled by moving an application under section 320 of Code of Criminal Procedure. However under section 482 of Code of Criminal Procedure, the FIR can be quashed if there has been a settlement between both the parties to the case. Now let us discuss about the Plea Bargaining Option.

• Plea Bargaining

Chapter XXIA of Code of Criminal Procedure 1973 deals with Plea Bargaining. Under section 265-B, an application for plea bargaining can be made by the accused after the charge sheet has been filed by the police. After such an application, a notice is issued to the complainant or the public prosecutor. If the complainant agrees for a settlement, then an MSD(Mutually Satisfactory Disposition) deed is carried out & gets signed under section 265-C of Code of Criminal Procedure. Apropos signing of the same, the accused is convicted, but the conviction is normally without sentence. But, if no such disposition has been carried out under section 265-D the Court shall proceed further in accordance with the provision of the Code from the stage the application under subsection (1) of section 265-B has been filed. Now let us discuss what are the remedies available against infringement of Copyright & Trademark.

Remedies available against infringement of copyright & trademark

As criminal remedies are already discussed above, following are the civil remedies that are available for infringement of Copyright:

1. Anton Piller Order – These are those orders which are passed ex parte by the Courts on application by the plaintiff where an apprehension lies that the defendant might damage the goods which are in possession of him. Under such order, the defendant is required to allow the plaintiff accompanied by his attorney to enter premises & remove any documents or articles which are in possession of him & take them into safe custody.
2. Interlocutory Injunction – Interlocutory Injunction are provided under three stages-

• Where there is a prima facie case.
• Where the balance of convenience is in favour of the plaintiff.
• Where refusal would cause irreparable injury.

Such injunctions are granted for immediate protection of copyright from an-

1. Existing infringement
2. Continuing of infringement
3. Anticipated infringement

3. Damages on account of profits-Plaintiff is entitled to two categories of damages-

1. Infringement of copyright
2. Conversion of his copyrighted work into another form. Now let us discuss the remedies available for infringement of Trademark.

Remedies available for infringement of trademark

• Anton Pillar Order – Like in Copyright in case of trademark violation too, the Anton Piller orders are passed ex parte by the Court. Such orders are passed where there is a likelihood of the defendant damaging or disposing of the incriminating material. Following are the three conditions required for making such orders-

1. There must be a prima facie case.
2. Such order if not granted will cause irreparable loss to the plaintiff.
3. That there is a clear affirmation that the defendant has documents or things which he might destroy if any notice of application is served.

• Mareva Injunction – Court passes order for injunction under this type to freeze the asset of the defendant where there lies a likelihood of asset being abandoned or cancelled.
• Interlocutory Injunction – The interlocutory injunction is an order restraining the defendant from continuance of the acts which amounts to infringement.
• Perpetual Injunction – Such injunction restricts the defendant permanently from doing any act which violates the rights of the proprietor of the trademark. Such injunctions are mostly ordered when the matter is finally settled.
• Damages, accounts of profits – Under this category, plaintiff is granted either damages or accounts of profit but not both. In case of account of profit the defendant is required to give up his illegal benefits which he gained by violating the rights of the plaintiff to the plaintiff. Where in case of damages the plaintiff gets compensated by the defendant. Now let us discuss the case laws for Trademark & Copyright violation.

Case laws for trademark & copyright violation

In the case of Sanyo electric Co vs. State of Delhi (CRL. REV. PETITION NO. 154/2010), an order passed by magistrate regarding issue of search warrant related to Trademark Infringement was challenged, alleging that order passed by the magistrate violates the requirement of Section 115(4) of the Trademark Act i.e. search warrant shall not be executed until the opinion of registrar has been obtained by the investigating officer. The Delhi High court decided that a search warrant issued by the court under Section 93 of the Code can be executed without the requirement stipulated in the proviso to Section 115(4) of the Trademark Act. The court may or may not seek the opinion of the registrar depending on the factual matrix of a particular case.

In the case of State Govt. of NCT of Delhi vs. Naresh Kumar Garg 52011(46) PTC 114(Del), the court cited a Judgment of the Gauhati High Court in Jitendra Prasad Singh v. State of Assam 2003 (26) PTC 486 (Gau) where the offense under Section 63 of the Act was held to be cognizable and non bailable. The court was of the view that it would be fruitful to refer to the provision of Section 64 of the Act, which empowers a Police Officer not below the rank of Sub-Inspector to seize the infringing copies of any work.

Conclusion   

With the rise of new technology & internet, ideas & innovation of proprietors are frequently getting violated. But where there is a right, there is violation of right for which there exists a remedy as well. IPR has been quite successful in protecting the rights of the proprietor by providing all the civil as well as criminal remedies against infringer.

References

1. https://www.rkdewan.com/articledetails.php?artid=114
2. Law relating to intellectual property by DR.BL Wadhera, Fifth edition
3. https://www.mondaq.com/india/trademark/749724/criminal-civil-prosecution-for-copyrighttrademark-violation

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