With rapid development and globalisation around the world there has been a significant growth in the field of intellectual property rights in the recent years. As a result, the litigation in the field has increased at a similar pace which has led to enactment of various laws and amendments for adequate regulation and protection of these rights. Intellectual property rights are exclusive legal rights that grant to a person protection for their original literary, artistic or creative work, for any invention or discovery or for any designs etc for a particular period of time.
There are various kinds of intellectual property including patents, trademark, copyright, industrial design, trade secrets, geographical indications etc. In India, intellectual property is governed and protected under a plethora of legislations like The Copyright Act 1957, The Trade Marks Act 1999, The Patent Act 1970, The Designs Act 2000, The Geographical Indication of Goods Act 1999, the Protection of Plants and Varieties and Farmer's Rights Act 2001, The Biological Diversity Act 2002 and The Semiconductor Integrated Circuits Layout Design Act,2000. All these acts provide provisions for the protection of intellectual property and civil remedies such as injunctions, damages, accounts of profits etc however the provisions for criminal remedies are only provided under The Copyright Act and The Trade Mark Act.
Criminal prosecution for IP Violations
The Trade Marks Act, 1999
Registration of a trademark is not compulsory under The Trade Marks Act, 1999 however registration makes it easier to initiate criminal proceedings for infringement as the burden of proof on the plaintiff reduces significantly. Infringement of a registered trademark is defined under section 29 of the act which states that when a person who other than registered proprietor or a person using the trademark by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark constitutes infringement. Chapter XII of the Trademark act lays down the various provisions under which criminal action can be initiated against infringement or passing off of trademarks and also provides for the remedies available. The provisions of this chapter are substantially similar to those under The Trademark Merchandise Marks Act 1958 except for the enhanced punishment. There has been much debate on whether the provisions this chapter are only available for registered trademarks, however, in the judgment given by the Hon'ble Supreme Court in the famous case of State of U.P. Vs. Ram Nath, Partner M/S Panna Lal, [AIR 1972 SC 232] still holds good and is applicable on offences, penalties and procedures described in chapter XII of the Trade Marks Act, 1999. In this case, the Hon'ble Supreme Court clearly distinguished a registered trade mark from an unregistered trade mark. The court interpreted certain sections such as section 77, 78 and 79 of the Trade and Merchandise Act, 1958 to lay down that the legislature is silent and has deliberately not used the word “registered” before the words trade mark, mark or trade description in the chapter while dealing with offences, penalties and procedure. It further adds that registration of the trade mark is not compulsory for initiating a criminal action. Hence, it was held that an unregistered trade mark holder can also take recourse to criminal action.
Section 103 & 104 provide for the penalties for applying false trademarks, trade descriptions and for selling goods or providing services to which false trademarks or false trade description is applied which incudes imprisonment for a term not less than six months which may extend up to three years and fine not less than fifty thousand rupees which may extend up to two lakh rupees. Further, Section 105 specifies the enhanced penalty on second or subsequent convictions punishable with imprisonment for a term not less than one year which may extend to three years and with fine not less than one lakh rupees which may extend to two lakh rupees. The court may, however, grant a less grievous penalty owing to special and adequate reasons which are required to be specified in the judgement.
The procedure for filing a direct complaint before the police for infringement of trademark is also provided under Section 115 which states that the offences under section 103, 104 and 105 shall be cognizable and any police officer, not below the rank of Superintendent of Police or equivalent, if satisfied that any such offence has been or is likely to be committed, shall search & seize without warrant, any goods, block, machine, plate or other instruments or things involved in committing the offence on the opinion of the Registrar.
The Copyright Act, 1957
Registration of a copyright is not a sine qua non to
sue for infringement. According to Section 51 of the Copyright Act
the infringement of copyright takes place when the work is
reproduced in any material form, copies of the work, not being the
copies already in circulation, are issued to the public, an
adaptation of the work is made and communicated to the public when
the person is aware that such act shall amount to infringement of
the copyright. The provisions with respect to the procedure and
penalty for infringement of copyright are provided under Chapter
XIII of the Copyright Act. Section 63 states that any person who
knowingly infringes or abets the infringement of the copyright
shall be punishable with imprisonment for a term not less than 6
months but which may extend to three years and with fine which
shall not be less than fifty thousand rupees but may extend up to
two lakh rupees. The enhanced penalty for second or subsequent
convictions as laid down under Section 63A is imprisonment for a
term not less than one year but which may extend up to 3 years and
with fine which shall not be less than one lakh rupees but which
may extend to two lakh rupees. The proviso to the above sections
allows the court discretion to reduce the punishment subject to
special and adequate reasons which are required to be stated in the
judgement. Under Section 64 a direct complaint can be made to the
police and any police officer, not below the rank of Sub-inspector
may, if satisfied that any offence with respect to infringement of
copyright has been or is likely to be committed, shall search &
seize without warrant, all copies of the work, and all plates used
for the purpose of making infringing copies of the work and all
copies and plates so seized shall be produced before the Magistrate
as soon as practicable.
In a recently decided case, State Govt. of NCT of Delhi vs
Naresh Kumar Garg 2011(46) PTC114(Del) on March 20, 2013
while looking into the question that whether the offence under
Section 63 of the Copyright Act, is bailable or non-bailable, the
Court relied on a judicial decision of 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
held to be cognizable and non-bailable. The court, for this
purpose, referred 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. If the offence had been
non-cognizable and bailable, there was no requirement to
specifically authorize the police officer with the power of
seizure. The provisions of Section 438 of The Criminal Procedure
Code can therefore be applied with respect to the offence
punishable under Section 63.
The provision for filing a criminal complaint against the infringement of both copyright and trademark is also provided under Section 156 of the Code of Criminal Procedure, 1973 and on the refusal of the FIR by the police, a complaint to the Magistrate can be made under Section 190 of the code and no court inferior to that of the Metropolitan Magistrate or Judicial Magistrate First Class can try offences under these acts.
Limitation Period
The limitation period for bringing an action against infringement as given under The Limitation Act 1963 is three years from the date of cause of action.
However, in Timken Company v Timken Services Private Ltd IA No. 21/2010 the Delhi High Court held that every time a new act of infringement is committed with respect to the intellectual property, the aggrieved party gets a fresh cause of action in its favour.
Section 22 of the Limitation Act also states that in cases of continuing tort, a new limitation period begins to run at every moment of time during which the breach of tort continues.
Conclusion
The advancement in the field of science and technology has not only helped in the growth of intellectual property but has also been a catalyst for its violation. The need to safeguard one's intellectual property is being felt now more than ever to avoid any substantial loss. The legislature has been actively enacting various laws and amendments from time to time to provide adequate relief to the aggrieved party and to fix the lacunas in the existing acts to ensure minimum misuse of this intangible asset.
By
Vijay Pal Dalmia, Advocate
Supreme Court of India & Delhi High Court
Email id: vpdalmia@vaishlaw.com
Mobile No.: +91 9810081079
Linkedin: https://www.linkedin.com/in/vpdalmia/
Facebook: https://www.facebook.com/vpdalmia
Twitter: @vpdalmia
© 2020, Vaish Associates Advocates,
All rights reserved
Advocates, 1st & 11th Floors, Mohan Dev Building 13, Tolstoy
Marg New Delhi-110001 (India).
The content of this article is intended to provide a general guide to the subject matter. Specialist professional advice should be sought about your specific circumstances. The views expressed in this article are solely of the authors of this article.
We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.