The Importance of Criminal Enforcement of Intellectual Property Right
28 November 2012
Intellectual property brings with itself goodwill, reputation and identity whether in the form of patents, trademarks, copyrights or designs. The enforcement of intellectual property may, at times, require a severe action coupled with punishment as deterrence, which has a ripple effect throughout the market. For this reason, there are criminal remedies outlined in the Copyright Act 1957 and Trade Marks Act 1999 to deal with cases of infringement and piracy.
Copyright Act
Copyright infringement has been made a cognizable and non-bailable offence after the act’s amendment in 1984 and the punishments have been made more stringent. The relevant provisions under Copyright Act for initiation of criminal action are laid out in Chapter XIII. Section 63 provides for imprisonment of not less than six months, which may extend up to three years, and a fine of not less than Rs50,000 (US$1,000), which may increase up to Rs200,000. The term of imprisonment and fine can be enhanced under the provisions of Section 63A. Being a criminal action, the knowledge of the accused and consequently establishment of mens rea is of primary importance. In Cheria P Joseph v. Prabhakaran it was held that clear and cogent proof of knowledge is necessary to establish the commission of offence.
The First Information Report (FIR) has to be filed in accordance with the Code of Criminal Procedure and the burden of proof for copyright infringement is on the prosecution. For a speedy and more effective remedy, the FIR can also be made to special cells established for the purpose in various states.
Section 64 provides for search and seizure powers of the police. A police officer not less than the rank of a sub-inspector is authorised to conduct search on premises and seizure of pirated material without warrant if satisfied that an infringement or an abetment of infringement of copyright has or is likely to have taken place. All infringing copies or plates of the work, wherever found, are to be produced before a magistrate as soon as practicable. Even copies found at the place of retailer may be seized.
Trade Marks Act
The Trade Marks Act provides for criminal remedies against infringement and passing off under Chapter XII, which deals with offences, penalties and procedures. Sections 103 and 104 provide for imprisonment for a term not less than six months, which may extend up to three years, and fine not less than Rs50,000, which may increase up to Rs200,000. This penalty is for falsification of trademarks, application of false marks or false description to goods and services. The provision for enhanced punishment is laid down under Section 105 of the Trade Marks Act, 1999, for second or subsequent convictions for offences under Sections 103 and 104. The search and seizure powers are provided under Section 115 where a police officer not below the rank of deputy superintendent of police can conduct search without warrant and all goods, dies, blocks and other instruments are produced before the magistrate.
Under Section 156 of the Criminal Procedure Code 1973, the police has the power to investigate cognizable cases. In case of refusal by the police to lodge an FIR or initiate criminal action, the aggrieved can file a complaint before the magistrate under Section 190 of the code. The offences under the Trade Marks Act and Copyright Act, by virtue of the First Schedule table II of Criminal Procedure Code, are classified as cognizable offences.
Difference in Trademark and Copyright Enforcement
The most important distinction that can be drawn in enforcing a trademark vis-à-vis a copyright is the requirement of registration. While registration of a trademark is essential to pursue the remedy against infringement, registration of copyright is not necessary. The registration of a trademark vests in the registered owner certain exclusive rights with respect to initiation of criminal action. This, however, does not bar a passing off action, which is a common law remedy. Further, in the case of trademark infringement, it is mandatory to seek the opinion of the registrar with respect to the similarity between the infringing mark and the mark of the complainant. The opinion must be complied with before the police carries out the search and seizure; this is not the case in a copyright action.
Because obtaining the requirement of the opinion of the Registrar is often cumbersome, filing a complaint before magistrate for issuance of summons and trial of the infringers is a preferred option for the rights holders.
Comment
Though both civil and criminal remedies can be pursued simultaneously by the rights holder, criminal remedies have a greater sweep and are more effective when there are a number of infringers, each located in different part of the country, especially in case of copyright infringement. While civil litigation is directed towards a particular individual, criminal action strikes general deterrence even though it is initiated against certain identified or unknown infringers or violators, due to the social stigma and condemnation inherent in a criminal search and seizure and arrest. Section 93 and 94 of the Code of Criminal Procedure provide for initiation of search and seizure proceedings against known and unknown persons. It precludes the entire distributor-sales network of such person – as well as the market in general – from doing any such act which would amount to infringement and/or passing off of the goods under the trademark of the complainant.
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