Introduction
Authenticity and originality grant a brand's product significant recognition among potential customers. Preserving the commercial value of such products is imperative, and this safeguarding is facilitated through the application of Intellectual Property Rights (IPR). These rights, encompassing trademarks, copyrights, and more, offer protection against unauthorized use of elements like logos, names, taglines, and designs associated with the product.
Counterfeiting poses a significant threat to businesses worldwide, affecting not only profits but also brand integrity. In response to this escalating problem, companies are increasingly turning to a powerful weapon in their arsenal: trademark raids. These operations aim to root out counterfeit goods, protect intellectual property, and maintain the trust of consumers. In this article, we delve into the world of trademark raids to understand their significance, the strategies employed, and the impact on both businesses and consumers.
The Trademark Act, of 1999 and Copyright Act, of 1957 provide for remedies and action against the Infringement of Intellectual Property Rights.
Under the Umbrella of the Trademark Act: Safeguarding Intellectual Property
- Under Sections 103 and 104, individuals engaging in the false application of a trademark and the sale of goods bearing a false trademark may face imprisonment for a term not less than six months, extending up to three years. Additionally, fines for these offences range from not less than fifty thousand rupees to a maximum of two lakh rupees.
- Section 115(4) of the Act authorizes the police to undertake search and seizure operations in cases of trademark infringement. However, a crucial prerequisite dictates that police officers must first obtain a certificate of opinion from the registrar regarding the case's facts before initiating raids, ensuring legal compliance.
- Despite this authority, a notable challenge arises from the limitations of the database available to the Registrar of Trade Marks. The database shortcomings, particularly in recognizing device marks, symbols, or labels, impede the registrar from offering a comprehensive opinion. Consequently, these limitations often result in delays in executing raids, providing counterfeit product makers with an opportunity to continue selling their products, generate profits, and potentially evade legal consequences.
- For expeditious action against infringement, the proprietor should opt for criminal proceedings. This involves filing a complaint under Section 156 of the Code of Criminal Procedure. In case of police refusal to register an FIR or initiate criminal action, the aggrieved party can utilize Subsection 3 of Section 156, allowing them to file a complaint directly before the Magistrate following the procedure outlined in Section 190 of the Code of Criminal Procedure, 1973.
- Additionally, for obtaining a search warrant, the proprietor can directly approach the magistrate court, as stipulated in Section 93 of the Code of Criminal Procedure, 1973. This provides a direct and efficient process for securing the necessary legal authorization for searches related to potential trademark infringements.
Copyright Act of 1957: Safeguarding Creative Works
- Logos and designs, serving as brand identities for businesses, receive protection under trademarks. Additionally, if these elements exhibit originality and creative elements, they are eligible for copyright protection as well.
- If the designated mark faces infringement, the proprietor can initiate legal action under Section 63 of the Copyright Act, 1957. This section entails penalties, including imprisonment for a minimum of six months, extendable up to three years. Additionally, fines ranging from fifty thousand rupees to a maximum of three lakh rupees can be imposed.
- In instances of cognizable offences, the investigating officer possesses the authority to effect an arrest and initiate an investigation without requiring a court order, as per Section 156(1) of the Code of Criminal Procedure, 1973. The proprietor, alleging infringement of their mark, should file a criminal complaint, invoking charges under both Section 420 of the Indian Penal Code (IPC) and Section 63 of the Copyright Act. Section 420 of the IPC specifically addresses the act of cheating through false representation of property to another person.
- Opting for copyright claims against Logos and Designs allows for levying similar charges under the Copyright Act, rather than pursuing trademark infringement actions. However, if the infringement solely pertains to trademarks, the proprietor should advocate for timely raids to seize counterfeit products before seeking an opinion from the Registry. This opinion is necessary at the evidence stage or before initiating charges.
Civil Recourse for Trademark Infringement: Seeking Remedies in Violation Cases
Civil remedies, including injunctions, damages, or rendition of accounts, are stipulated in all intellectual property statutes. The initiation of a civil action involves filing a lawsuit before the district court or high court with territorial jurisdiction. Indian courts demonstrate proficiency in intellectual property laws and may grant ex parte injunctions promptly upon the admission of a lawsuit, particularly in cases involving counterfeiting.
Rights holders can obtain the following interim reliefs in civil actions:
- Anton Piller Orders: Rights holders have the option to seek ex parte appointments of court commissioners under Anton Piller's orders. These commissioners are authorized to visit the defendant's premises, and locate, and seize counterfeit goods. The seized goods are returned to the defendant with the condition that they will be safely preserved until further court orders.
- John Doe Orders: John Doe orders are exceptional legal measures where the court can appoint commissioners to enter, search, and execute seizures in the premises of named or unnamed defendants. This type of action is particularly effective when it's challenging to identify individual counterfeiters or when they operate from temporary locations.
- Mareva Injunctions: In specific cases, courts may grant Mareva injunctions against infringers. These injunctions freeze the assets of the infringers until further court orders, providing a legal mechanism to prevent the dissipation of assets during the legal proceedings.
Mediation is also recommended by the Indian courts in most IP disputes where the infringers agree to suffer a decree. An added benefit of mediation is that it entitles the plaintiff to a full refund of the government court fees submitted for the institution of the case.
Legal Pursuits: Navigating the Terrain of Criminal Prosecution
- Trademarks, Copyrights, Geographical Indications, and the IT Act encompass provisions for criminal remedies. Violations under the Trademarks Act, Copyright Act, and Geographical Indications Act may lead to imprisonment ranging from six months to three years, along with fines ranging from Rs50,000 to Rs200,000 ($765 to $3,060).
- Under these statutes, offences are deemed cognizable, granting the police the authority to take immediate action, including search and seizure, without the need for a court warrant. Charges may be levied against a company officer responsible for its management if they knew the commission of the offence.
- In instances of Trademarks Act offences, the police typically seek the opinion of the registrar of trademarks before taking action, leading to occasional delays in the proceedings. Ongoing discussions among stakeholders aim to identify a viable solution to this issue.
Noteworthy Case LawsTop of Form
- In the case of Sanyo Electric Co Vs State of Delhi (CRL. REV. PETITION NO. 154/2010), an order passed by the magistrate regarding the issue of a search warrant related to trademark Infringement was challenged, alleging that the 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 has ruled that the execution of a search warrant issued under Section 93 of the Code is not contingent upon the conditions outlined in the proviso to Section 115(4) of the Trademark Act. The court's decision on whether to seek the opinion of the registrar depends on the specific circumstances of each case.
- In the case of State Govt. of NCT of Delhi vs. Naresh Kumar Garg 52011(46) PTC114(Del), copyright infringement was determined as a cognizable offence. Drawing on a precedent from the Gauhati High Court in Jitendra Prasad Singh v. State of Assam 2003 (26) PTC 486 (Gau), where the offence under Section 63 of the Act was classified as cognizable and non-bailable, the court emphasized the significance of Section 64 of the Act. This section grants authority to a police officer, not below the rank of Sub-Inspector, to seize copies infringing upon any work.
Conclusion
In summary, IPR raids stand as a crucial defence against the unauthorized use of logos, names, and designs, safeguarding brand integrity. These proactive measures, implemented through trademarks and copyrights, send a strong message against intellectual property infringement. The collaboration between public and private sectors underscores a commitment to maintaining a fair marketplace. Despite challenges, IPR raids play a pivotal role in deterring counterfeiting activities and protecting the commercial value of authentic brands in an ever-evolving landscape. Vigilance, adaptation, and continued collaboration are essential for sustained brand protection.
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