By Vikrant Rana and Nihit Nagpal
Case name: Sandip S/O Ramashankar Dube vs The State of Maharashtra[1]
In a significant ruling that underscores the importance of correctly aligning the choice of statute with the nature of the grievance, the Hon’ble Bombay High Court in Sandip S/O Ramashankar Dube vs The State of Maharashtra, quashed a First Information Report and consequent criminal proceedings that had been registered under the Copyright Act, 1957, in a matter involving the sale of counterfeit branded apparel. The Court held that the sale of goods bearing false brand labels, where no copyrightable work is claimed or alleged to have been reproduced did not constitute copyright infringement, but rather falls squarely within the domain of the Trade Marks Act, 1999.
Brief facts of the case
According to the charge-sheet, the applicants were found in possession of the following items:
- 16 shirts of Zara;
- 144 cotton trousers of Zara;
- 9 half pants of Zara;
- 11 T-shirts of Zara; and
- 3 half pants of Calvin Klein.
The specific allegation was that the applicants were selling counterfeit goods of the named companies. The complainant, Iyan Deman Goms, Field Officer of Netrika Consulting India Pvt. Ltd., was stated to be authorized by companies such as Zara and Calvin Klein to ensure protection of their proprietary rights and to take action, with the assistance of police officials, against persons who manufacture or sell counterfeit products of such companies. On finding the applicants selling counterfeit products, a complaint was lodged under the provisions of the Copyright Act, and the offences came to be registered against the applicants.
The Court’s Reasoning
Copyright Act not attracted
Referring to Section 13(1) of the Copyright Act, 1957, the Court noted that copyright can be claimed only in the following classes of works: (a) original literary, dramatic, musical and artistic works; (b) cinematograph films; and (c) sound recordings. The Court also reproduced Section 13(2), which provides the conditions under which copyright subsists in such works, including the requirements relating to first publication in India and the author’s citizenship or domicile.
The Court held that copyright could not be claimed for the goods recorded above, at least not under the provisions for which the FIR was registered. It observed that it was not the prosecution’s case that the applicants were claiming any copyright in the goods found in their possession, or that they had been manufacturing shirts or pants bearing the brand names Zara and Calvin Klein. The prosecution’s specific case was that the applicants were found selling counterfeit goods bearing the labels of different brands. The Court held that these facts do not amount to infringement of copyright within the meaning of the Copyright Act, and that, from the facts averred in the FIR, the applicants were seen to have committed an offence punishable under Section 104 of the Trade Marks Act, 1999, and not under Sections 51 and 63 of the Copyright Act.
Section 104 of the Trade Marks Act, 1999
The Court set out Section 104 of the Trade Marks Act, 1999, which provides the penalty for selling, letting for hire, exposing for sale, or possessing for sale goods, or for providing or hiring services, to which a false trade mark or false trade description has been applied. The offence is punishable with imprisonment of not less than six months, which may extend to three years, and with a fine of not less than fifty thousand rupees, which may extend to two lakh rupees, subject to the statutory defences and the proviso permitting a lesser sentence for adequate and special reasons to be recorded.
Non-compliance with Section 115(4)
The Court referred to Section 115 of the Trade Marks Act, which provides the procedure for taking cognizance of trade mark offences. Under Section 115(3), offences under Sections 103, 104 or 105 are cognizable. Under Section 115(4), search and seizure without warrant may be carried out only by a police officer not below the rank of Deputy Superintendent of Police or equivalent, where satisfied that such an offence has been, is being, or is likely to be committed. The proviso requires that officer, before making any search and seizure, to obtain the opinion of the Registrar on the facts involved in the offence relating to the trade mark and to abide by the opinion so obtained.
In this case, the search and seizure had been conducted by a Police Sub-Inspector, contrary to that mandate. The Court held that the mandatory provisions of the Trade Marks Act had not been complied with, and that the registration of the FIR and the consequent investigation were therefore vitiated.
Section 420 IPC not made out
On the offence under Section 420 of the Indian Penal Code (the corresponding provision under the Bharatiya Nyaya Sanhita, 2023 being Section 318(4)), the Court noted that there was no complaint from any person or consumer that they had been cheated by purchasing pants and shirts from the applicants. On the facts averred in the complaint, the ingredients of Section 420 IPC were not made out, and consequently the registration of the FIR and the consequent investigation against the applicants could not be sustained.
Framing of charge no bar to quashing
Responding to the State’s submission that the charge had already been framed and the matter was listed for evidence, the Court held that this could not be an impediment to quashing the charge-sheet where the allegations made, even taken at their face value, did not constitute the alleged offence. The Court found no substance in the State’s argument.
Order
The Court allowed the application. It quashed and set aside, against the applicants, First Information Report No. 250/2024 (Police Station Kotwali, Nagpur City) for offences punishable under Sections 51 and 63 of the Copyright Act, 1957, together with the consequent Charge-sheet No. 48/2025 and Regular Criminal Case No. 1158/2025 pending before the Judicial Magistrate First Class, Nagpur. Rule was made absolute in those terms.
Key Holdings
- The sale of counterfeit goods bearing false brand labels, where no copyright is claimed in the goods and no copyright work is alleged to have been reproduced, does not amount to infringement of copyright under the Copyright Act, 1957. On such facts the appropriate provision is Section 104 of the Trade Marks Act, 1999.
- Search and seizure under the Trade Marks Act for offences under Sections 103, 104 or 105 must be conducted by a police officer not below the rank of Deputy Superintendent of Police, after obtaining the Registrar’s opinion. Search and seizure by a Police Sub-Inspector contravenes the mandatory requirements of Section 115(4) and vitiates the FIR and the consequent investigation.
- The ingredients of cheating under Section 420 IPC were not made out in the absence of any complaint by a person or consumer of having been cheated.
- The fact that the charge had been framed and the matter was listed for evidence does not bar quashing where the allegations, even taken at face value, do not constitute the alleged offence.
Writer’s Take
This ruling should not be read to mean that every criminal complaint filed under the Copyright Act in a counterfeit matter will be quashed. The proceedings here failed for a specific reason: the FIR did not disclose any copyrightable work. The allegation was confined to the sale of goods bearing false brand labels, which is a trade mark grievance, and no original work in which copyright subsists under Section 13 was identified or said to have been reproduced. The only real catch, therefore, is that the FIR must show a proper copyrightable work. Where the foundational pleading does not do so, the offence under the Copyright Act cannot stand.
The practical lesson is one of careful drafting of the criminal complaint. Counterfeiting frequently involves more than a brand name. Labels, hang tags, packaging, logos and printed artwork may themselves be original artistic works in which copyright subsists, and their unauthorized reproduction can attract the Copyright Act independently of any trade mark infringement.
A complaint that specifically identifies the copyrightable work, pleads the subsistence and ownership of copyright in it, and alleges its reproduction in the counterfeit goods stands on an altogether different footing from one that merely complains of a false brand label.
Section 51 of the Copyright Act defines when copyright is infringed, and Section 63 makes the knowing infringement of copyright, or abetment of such infringement, a criminal offence punishable with imprisonment of not less than six months which may extend to three years, and a fine of not less than fifty thousand rupees which may extend to two lakh rupees. Where a genuine copyrightable work is properly pleaded, these provisions remain fully available to a rights holder.
The choice of statute also has a direct bearing on the procedure for seizure, and this is where the contrast with the present case is sharpest. Section 64 of the Copyright Act empowers a police officer not below the rank of sub-inspector, if satisfied that an offence under Section 63 has been, is being, or is likely to be committed, to seize without warrant all infringing copies of the work and all plates used for the purpose of making such copies, wherever found, to be produced before a Magistrate. Section 115(4) of the Trademarks Act, by contrast, requires search and seizure to be carried out by an officer not below the rank of Deputy Superintendent of Police, after obtaining the Registrar’s opinion. In the present case the seizure was effected by a Police Sub-Inspector. That rank would have been sufficient for a Copyright Act seizure under Section 64, but it did not satisfy the higher requirement of the Trademarks Act, and once the matter was found to be a trademark matter, the seizure failed for want of the requisite rank.
Equally, where the matter does fall under the Trademarks Act, the due process prescribed under that Act must be followed. The rank requirement and the requirement to obtain the Registrar’s opinion under Section 115(4) are not formalities. They are mandatory conditions, and their breach vitiates the FIR and the investigation regardless of the strength of the underlying material, as the present case shows.
The takeaway for rights holders and enforcement agencies is that the statute must be matched to the facts at the very outset and the complaint drafted accordingly. Where a copyrightable work genuinely exists and is properly pleaded, the Copyright Act, with the seizure power under Section 64, remains a viable route. Where the grievance is confined to false brand labelling, the Trade Marks Act, with the due process prescribed under Section 115(4), is the correct and the only sustainable route, and that process must be observed precisely.
[1] 2026:BHC-NAG:7651-DB