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ANTICOUNTERFEITING RAIDS IN INDIA

 

INDIAN IP LAWS

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Anti-Counterfeit Raids in India

The challenge of counterfeited and pirated goods has emerged as a global problem. The unique geographical location of India with eight neighbouring countries and lengthy porous border makes it susceptible to counterfeit and contraband products Counterfeit goods, including medicines, auto and airplane parts, electrical components, toys, food and beverages and many others, are dangerous, unsafe and pose risks to millions of individual consumers in terms of health and safety.

Existence of robust laws and their effective implementation thus assumes importance. The Legislature has formulated laws to regulate the counterfeit/piracy menace and the same are incorporated under various Indian Statutes.

The Trade Marks Act, 1999

The Trade Marks Act, 1999 does not expressly define the term ‘counterfeiting’. However, the Trade Marks Act has defined the offences of ‘falsifying a trademark’ and ‘falsely applying a trademark’ which can be said to be overlapping with counterfeiting of trademarks.

Criminal Remedies- Section 102

Offences

Meaning

Falsify a Trademark

A person shall be deemed to falsify a trade mark, who:

(a)    Makes the trademark or a deceptively similar mark, without the permission or authorisation of owner of the trademark; or

(b)   Falsifies any genuine trade mark, whether by alteration, addition, effacement or otherwise.

Falsely applying a Trademark

A person shall be deemed to be falsely applying a trademark who, without the consent of the proprietor of the trademark:

(a)    Applies such trademark or a deceptively similar mark to goods or services or any package containing goods; or

(b)   Uses any package bearing a mark which is identical with or deceptively similar to the trademark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark.

Penalty under the Act- Section 103

Offence

Penalty

Falsify a Trademark, Falsely applying a Trademark or applying False trade description

Imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than Rs 50,000 but which may extend to Rs 2,00,000

Intentionally selling goods or providing services to which false trade mark or false trade description is applied.

Same as above

Subsequent conviction for the above offences

Imprisonment for a term which shall not be less than one year but which may extend to three years and with fine which shall not be less than Rs 1,00,000 but which may extend to Rs 2,00,000

Cognizance of certain offences and powers of Police officer for search and seizure

The offence of falsifying a trademark, falsely applying a trademark and selling such goods and services are cognizable in nature as provided under Section 115(3) of the Trade Marks Act, 1999.

Further Section 115(4) of the Trade Marks Act,1999  provides that any police officer not below the rank of Deputy Superintendent of Police or equivalent, may, if he is satisfied that falsification of a trademark has been, is being, or is likely to be, committed, search and seize without warrant the goods, die, block, machine, plate, other instruments or things involved in committing the offence, wherever found, and all the articles so seized shall, as soon as practicable, be produced before a Judicial Magistrate of the first class or Metropolitan Magistrate, as the case may be: Provided that the Police officer, before making any search and seizure, shall obtain the opinion of the Registrar on facts involved in the offence relating to trademark and shall abide by the opinion so obtained.

Civil Remedies

Injunction

Injunction is a Court order by which a person is required to perform or is restrained from performing, a particular act. In relation to suits for infringement or for passing off the Court may pass injunction directing other party to refrain from using the trademark in question.

Damages or Accounts for profits

Damages means the compensation for the injury suffered. Account of profit means the actual amount of profit made by the opposite party due to unauthorized use of the trademark in question.

Delivery-Up

Delivery- up of infringing labels and marks for destruction or erasure.

Anton Pillar Orders

On the lines of Anton Pillar Orders of English and English derived legal systems, in appropriate cases, the Court has inherent jurisdiction on an application by the plaintiff to require the defendant to permit the plaintiff to enter his premises and take inspection of relevant documents and articles and take copies thereof or remove them for safe custody. The necessity for such an order arises when there is grave danger of relevant documents and infringing articles being removed or destroyed, so that the ends of justice will be defeated

John Doe Orders

John Doe orders are ex parte remedy sought in anticipation of an infringing act against unknown/nameless defendants whose identity is not known to the plaintiff at the time when it is issued. These orders are issued by the Court to search and seize against unknown defendants.

The Copyright Act, 1957

Offences under the Copyright Act

S.No.

Offence

Penalty

1.

Knowingly infringes or abets infringement of copyright work

Imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than Rs. 50,000/- (Rupees Fifty Thousand only) but which may extend to Rs. 2,00,000 (Rupees Two Lakhs only)[1]

3.

Knowing use of infringing copy of computer program

Imprisonment for a term which shall not be less than seven days but which may extend to three years and with fine which shall not be less than Rs. 1,00,000 (Rupees One Lakh only) but which may extend to Rs. 2,00,000 (Rupees Two Lakhs only)[2]

4.

Possession of plates for purpose of making infringing copies

Imprisonment which may extend to two years and shall also be liable to fine[3]

5.

Circumventing effective technological measure applied for the purpose of protecting any of the rights conferred under this Act, with the intention of infringing such rights

Imprisonment which may extend to two years and shall also be liable to fine[4]

6.

Removal, alteration etc. of Rights Management Information

Imprisonment which may extend to two years and shall also be liable to fine[5]

Power of Police under Copyright Act to seize infringing copies

Under the Copyright Act, power of seizure has been given to a Police officer not below the rank of Sub-Inspector. The grounds of belief and reasons for doing so are to be recorded in writing by the concerned Police officer.

The relevant provision under the Copyright Act is Section 64 which provides that any Police officer of the rank of a sub-inspector or above, may, if he is satisfied that an offence under section 63 in respect of the infringement of copyright in any work has been, is being, or is likely to be, committed, seize without warrant, all copies of the work, and all plates used for the purpose of making infringing copies of the work, wherever found, and all copies and plates so seized shall, as soon as practicable, be produced before a Magistrate.

Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007

Registration with Central Board of Excise and Customs

Ø   The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 issued by the Government of India, provides mechanism for registration of Intellectual Property Assets - Patents, TMs, Copyright, Designs and GI with the Central Board of Excise and Customs (CBEC), to limit the adverse effects of counterfeit and unauthorized imports.

 

Ø   Registration with CBEC, empowers the Customs Authority to intercept, seize, and confiscate goods found to be or suspected to be infringing intellectual property rights registered and in-force in India by any person other than the intellectual property right holder or without permission/authorization of the IPR holder.

 

Ø   Once registered, the Customs Authority store the IPR in their electronic database which is flashed across all entry points in India. Custom Officials can detain the counterfeits before they enters the ordinary circulation of trade either on the basis of the registration appearing in the electronic database or even suo motu in the interest of the trade and protection of intellectual property rights. Customs Department is under duty to inform the right holder immediately about suspension of clearance of goods with the reasons for such suspension.

 Ø   Further by making one application the applicant can cover all the Custom Air Cargo Complexes, Seaports and Land Customs Stations through which importation or exportation of pirated article is suspected in India.

[1] Section 63 of the Copyright Act, 1957

[2] Section 63B of the Copyright Act, 1957

[3] Section 65 of the Copyright Act, 1957

[4] Section 65A of the Copyright Act, 1957

[5] Section 65B of the Copyright Act, 1957


For more information on AntiCounterfeiting raids in India please write to us at: info@ssrana.com

 
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