India: IPR & Criminal Remedies In India: Civil vs. Criminal Remedy In IPR: Search, Seizure & Raids By Police

Last Updated: 19 November 2015
Article by Vijay Pal Dalmia, Partner

Article by Vijay Pal Dalmia, Advocate, Supreme Court of India and Delhi High Court, Partner & Head of Intellectual Property Laws Division, Vaish Associates Advocates, India

Intellectual Property covers within its ambit a wide array of laws relating to Trade Marks, Copyright, Patents, Designs, Geographical Indications, Plant Varieties and Semiconductor Integrated Circuits Layout-Design. There is wide spread perception that protection of one's Intellectual Property is not as much important as that of tangible property. Such assumption, however, does not hold good in today's fast pace globalizing world. To sum up the definition of Intellectual Property as a mere creation of one's intellect would be doing injustice to the numerous other entitlements which it brings with itself like the goodwill, reputation and the identity which is attached to an Intellectual Property like trademarks, copyrights etc. Losing one's intellectual property owing to lack of initiation of appropriate civil and/or criminal action is a heavy price to pay.

Protection of intellectual property is available under, both, civil as well as criminal law mechanisms. But in practicality, criminal remedy is much effective a medium for protection of rights, particularly Intellectual property rights, as compared to civil remedy. The underlying reason behind this statement is that, 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. The social condemnation and embarrassment attached to facing the police during a search and seizure proceeding makes not only the persons against whom such proceedings are being carried out but also precludes the entire distributor- sales network of such person as well as the market in general, form doing any such act which would amount to infringement and/or passing off of the goods under the trade mark of the complainant. The deterrence tends to have a ripple effect throughout the market which cannot be brought about by initiation of civil litigation.

Even though intellectual property is an umbrella term, but remedy by way of criminal action is provided only for trademarks and copyrights. The relevant provisions under which criminal action in respect of infringement of copyright can be initiated are laid down in Chapter XIII of the Copyright Act, 1957.

Section 63 of the Copyright Act, 1957 deals with Offences of infringement of copyright or other rights conferred by the Act and provides for an 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. The said term of imprisonment and fine can be enhanced under the provisions of Section 63A of the Copyright Act, 1957.

On the other hand, the Trade Marks Act, 1999 also provides for criminal remedies against infringement and passing off of the trade mark under Chapter XII which deals with offences, penalties and procedures. Section 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 fifty thousand rupees which may extend up to two lakh rupees. The provision for enhanced punishment is laid down under Section 105 of the Trade Marks Act, 1999. For the effective implementation of the provisions relating to infringement and/or passing off of the trade mark and/or copyright, both, the Trade Marks Act, 1999 and the Copyright Act, 1957 provide for search and seizure powers of the police under sections 115 and 64 respectively. However, the catch lies in the fact that for invoking the powers of police, with respect to search and seizure, under the Trade Marks Act, 1999 the prerequisite of obtaining the opinion of the Registrar of Trade Marks under Sec.115 (4) Proviso of the Trade Marks Act, 1999, with respect to the similarity between the infringing mark and the mark of the complainant has to be complied with before the police carries out the search and seizure.

The above provisions raise certain questions which need to be answered before further deliberation, namely:

  • Can combined criminal actions be initiated under the Trade Marks Act, 1999 and the Copyright Act, 1957 in case of infringement and/or passing off?
  • Is registration of copyright or trade mark mandatory before initiation of criminal action ?
  • Is it mandatory to name the accused persons or a criminal complaint can be filed against unknown persons?
  • Should the complainant opt for a complaint before the Magistrate or directly lodge an FIR with the police?
  • What is the appropriate procedure for initiating criminal proceedings against the violators?

It is pertinent to mention that recourse to appropriate action, for protection of intellectual property, should be taken only after analysing and understanding the nature of the remedy and the subject matter of the trade mark and copyright. Every trade mark involves copyright but every copyright does not necessarily involve trade mark. According to Section 2(m) of the Trade Marks Act, 1999 "mark" is defined as to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. In this regard it is relevant to note that any trade mark which is represented in an artistic manner or having some colour combination, art work, get up or layout is also a subject matter of copyright. Therefore, in any trade mark action the provisions of the Copyright Act, 1957 can also be invoked simultaneously.

The Trade Marks Act, 1999 further defines the words "mark", "trade mark" and "registered trade mark" separately under sections 2(m), 2(zb) and 2(w) respectively. Thus, from the aforementioned definitions it can be deduced that the legislature, in its wisdom, defined all the three terms separately, treating the same to be different in their relevant context, keeping in view the provisions of the Trade Marks Act, 1999 and the erstwhile repealed Trade and Merchandise Act, 1958.

Registration of trademarks and copyrights

The common perception is that the registration of trademarks is mandatory to initiate an action against infringement and/or passing off. It is interesting to note that Section 102 defines Falsifying and falsely applying trademarks, Section 103 defines Penalty for applying false trademarks, trade description etc. and Section 104 defines penalty for selling goods or providing services to which false trade mark or false trade description is applied. The aforementioned sections were dealt under sections 77, 78 and 79 of the repealed Trade and Merchandise Act, 1958. From a bare comparison of the said sections under the present Trade Marks Act, 1999 and the repealed Trade and Merchandise Act, 1958, an inference can be drawn that the legislature deliberately retained sections 77, 78 and 79 of the Trade and Merchandise Act, 1958 as sections 102, 103 and 104 of the Trade Marks Act, 1999 in verbatim except for enhancement of the quantum of punishment prescribed therein without touching upon the issue of registration of trademarks.

In a controversy pertaining to the requirement of registration of trade marks for initiation of criminal action, the Hon'ble Supreme Court in AIR 1972 SC 232 clearly distinguished a registered trade mark from an unregistered trade mark and interpreted sections 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 dealing with offences, penalties and procedure and therefore the registration of the trade mark is not compulsory for initiation of criminal action. Hence, holder of an unregistered trade mark can also take recourse to criminal action. The above judgment of the Hon'ble Supreme Court still holds good and applicable on offences, penalties and procedures described in chapter XII of the Trade Marks Act, 1999.

There are a plethora of judgments which have laid down that the registration of copyright is a mere recordal of the fact of ownership and is not compulsory for initiation criminal action. Interestingly, neither the Copyright Act, 1957 nor the erstwhile repealed Trade and Merchandise Act, 1958 make the registration of copyright mandatory. As for the registration of trade mark, the same vests in the registered owner certain exclusive rights with respect to initiation of criminal action. However, the same operates as a bar only in respect of initiation of a civil infringement action and does not bar initiation of a passing off action which is a common law remedy.

Further in CLJ 1757 the Patna High Court held that registration of copyright is not mandatory nor is it a sine qua non to the subsistence or the ownership thereof or the relief of infringement of copyright. The same was upheld in AIR 1981 All 200 and it was laid down that copyright is a common law right.

From the above referred citations it can be safely inferred that registration of neither trade mark nor copyright is necessary for initiation of criminal action in case of infringement and/or passing off.

Procedure under criminal law

Under Section 156 of the Code of Criminal Procedure, 1973 the police has the power to investigate cognizable cases. Sub section 3 Section 156 provides that in case of refusal by the police to lodge an FIR or initiate criminal action, the aggrieved can file a complaint before the Magistrate, procedure w.r.t. which are laid down in section 190 of the Code of Criminal Procedure, 1973. The offences under the Trade Marks Act, 1999 and the Copyright Act, 1957, by virtue of the First Schedule table II of the Code of Criminal Procedure, 1973, are classified as cognizable offences though the same is not provided for in the said Acts. The First Schedule table II-Classification of offences against-other laws- provides that "Any offence which is punishable with imprisonment for 3 years ... is a cognizable, non-bailable offence and triable by the Magistrate of First Class". Thus, an offence under the Trade Marks Act, 1999 and the Copyright Act, 1957 can be investigated and inquired by the police by mere registration of an FIR without the adjudication by the Magistrate upon the issue. However, the police is mostly reluctant in registering an FIR in respect of intellectual property matters though the same is a right of the complainant. In respect of a criminal action with regard to trade marks, as mentioned before, an opinion form the registrar of Trade Marks is compulsory under Section 115(4) of the Trade Marks Act, 1999. The said section brings with it a number of practical and legal implications which are that, firstly the Registrar of Trade Marks is not obliged to give any such opinion under the Act. Secondly, the database made available to the Registrar of Trade Marks is perfect, as it fails to recognize the device marks or symbols or labels, which constrains the Registrar from giving a full proof opinion owing to the non-availability of the entire database comprising word marks as well as device marks or symbols or labels. Owing to the same, complaint before the Magistrate for issuance of summons and trial of the infringers, is a convenient option , as the prerequisite of obtaining an opinion from the Registrar of Trade Marks is not called for in case of filing of a complaint before the Magistrate. Yet another benefit of taking recourse to criminal action is that the same can be initiated against unknown persons as well and revealing the identity of the infringers is not mandatory therein. Plenty of times it happens that the identity of the manufactures and the distributors of the infringing material is not known to the complainant and the same operates as an obstacle in initiation of criminal action. The said issue is addressed under Section 93 and 94 of the Code of Criminal Procedure, 1973 under which one can request for initiation of a search and seizure proceedings against known and unknown persons which is the underlying difference between a civil and criminal action. The said proposition has been upheld in numerous judgments, that is, 1983 PTC 230, 1986 PTC 352, 1982 PTC 411 and 1990 PTC 175 etc.

From the above detailed discussion it can be conclude that protection of one's intellectual property is the need of the hour and the most effective remedy is initiation of criminal action against the infringement of intellectual property rights which has an edge over civil remedy.

© 2015, Vaish Associates, Advocates,
All rights reserved with Vaish Associates, Advocates, 10, Hailey Road, Flat No. 5-7, 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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Vijay Pal Dalmia, Partner
In association with
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.