India: Brands – Registration, Anti-Counterfeiting And Online Issues

Last Updated: 4 June 2009
Article by Ankit Prakash

Published in MIP – Brand Management Focus May 2009


Perfidious imitation of a brand by traders to sell their own products and services, generally understood as counterfeiting or piracy, can have a detrimental and even serious effect on not only the profitability of a company but also to public health and safety. Pirated or counterfeit products, which more often than not are substandard, effect the goodwill and reputation of rights holders, expose consumers to safety and health hazards and have a deleterious impact on Government revenues.

Acts of counterfeiting and piracy of intellectual property rights are witnessing a robust growth the world over, via criminal networks and organized crime and it is estimated that international trade in counterfeit and pirated products could have been excess of US$ 200 billion in the year 2005 alone. It is pertinent to note that this estimated figure is larger than the national Gross Domestic Product of over a hundred countries around the world.

These staggering estimates give a clear indication of the magnitude of counterfeiting and piracy that is rampant around the world and is growing day by day. These figures also reveal a disturbing picture that counterfeiters, pirates and infringers are no longer only targeting luxury brands and designer products but, slowly and steadily, the threat of counterfeiting and piracy is spreading to household commodities, including electronics, food and drink items, automobile spare parts, tobacco products and, most disturbingly, pharmaceuticals and drugs.

In India alone, a recent study has estimated that the Indian Government suffers a loss of about US$ 200 million from evasion of taxes by counterfeiters in consumer goods.

According to a study by Indian Market Research Bureau, the market share of counterfeit spare parts is as high as 39 to 46% of the total market for automobile spare parts industry. In Russia, it is estimated that 2.5% of all car accidents are due to fake automobile parts. At a global level, the Motor & Equipment Manufacturers Association (MEMA) conducted a survey indicating that the global automotive industry loses US$12 billion to counterfeiting, thereby resulting in the loss of 750,000 jobs.

The global tobacco industry estimates that counterfeit cigarettes currently occupy 3 per cent of global trade in their products, with the total number of fake cigarettes produced and sold each year being approximately 150 billion sticks. In the year 2001, illicit vodka containing methyl alcohol killed 60 people in Estonia.

The analysis of sale of counterfeit consumer products turns grimmer when we look at the pharmaceutical industry.

In Nigeria, an estimated half of all medicines purchased are counterfeit, and between 200,000 to 300,000 deaths each year in China can be attributed to counterfeit medicines. In India, in the year 2003 it was estimated that fake medicines occupy between 15 and 20% of the domestic market, valued at about US$1 billion.

According to WHO sources, the value of worldwide sales of counterfeit pharmaceutical products is estimated to reach €55.5 Billion by 2010, an increase of 90% over 5 years and in the European Union alone an estimated 1% of all pharmaceutical products sold are counterfeit.

Counterfeiting is generally perceived as a victimless crime with 'fakes' simply being offered for sale as cheap alternative purchase. However, few realize that counterfeiting not only causes immeasurable losses to companies but also poses a serious threat to health and safety, the world over.


Many countries, including India, recognize and protect unregistered intellectual property rights, although registration of intellectual property rights under national laws still remains one of the strongest tools in protection and enforcing of intellectual property rights.

Registration of intellectual property rights is prima facie evidence of the registrant's legitimate ownership of such rights. In addition to the right to initiate passing-off proceedings, on grounds of likelihood of confusion or deception, registration of trademarks, designs, patents and other forms of intellectual property entitle the rights holder to initiate infringement proceedings against pirates, infringers and counterfeiters. These proceedings not only cover civil remedies like destruction of goods, financial compensation and damages but also criminal remedies like imprisonment and fines.

Registration of intellectual property rights under national laws helps in policing the intellectual property rights of a registrant against acts of infringement, counterfeiting and piracy within a country and even at the international border, by way of registration with the Customs authorities.

This relatively recent border control regime sets out clear conditions under which the Customs authorities may intervene in cases where goods that are suspected of infringing intellectual property rights, are being imported into a particular country.

Under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, Customs authorities, either on their own or through a Complainant, can prohibit the import of goods that, if imported, would infringe the intellectual property rights of Registrants or Complainants, and impose a fine on the importer of such goods with the object of prohibiting import of goods to prevent injury to the domestic economy.

Apart from the laws that are already in place, the Indian legislation is seeking to further strengthen the Intellectual Property regime in India by enacting newer legislations. For instance, the Trademarks (Amendment) Bill, 2007, which introduces the Madrid Protocol to India and makes trademark applications analogous to Patent Cooperation Treaty filings, has recently been tabled in the Indian Parliament.

The entertainment industry in India alone suffers a loss of about US$ 3.2 Billion due to theft and piracy, apart from the estimated 80,000 direct jobs that are lost and to counter such socio-economic looses, the Indian Legislation is proposing to enact the Optical Disc Law, under which a license would be a pre-requisite for manufacturing CDs or DVDs and would additionally require a special secret coding on each disc so that tracking of discs is made easier. Also on the anvil is the Innovation Act, based upon the US Competes Act, to focus upon increasing research investment; strengthening educational opportunities in science, technology, engineering, and mathematics from elementary through graduate school; and developing an innovation infrastructure.

Apart from the above mentioned statutory tools, the Indian legislation also needs to fine tune its criminal redressal system by making penalties even harsher. For example, adopting the mark HILTEN for hotels costs a Defendant about Rs. 5,00,000 in a civil suit1, whereas in criminal proceedings under the Trademarks Act, 19992 or the Copyright Act, 19573 the maximum statutory penalty is only Rs. 2,00,000 with or without imprisonment for upto 3 years. This should be contrasted with countries like China where counterfeiters have been awarded death penalties while in India only the heinous crime of murder warrants a death penalty, that too in the rarest of rare cases.


The growth of the Internet as a platform for selling products and services has provided a new medium that counterfeiters and pirates have been exploiting with great success. It is estimated that the Internet has about 500 million users worldwide and approximately 45 million domains are registered. Further, the number of servers linked to the internet is rising continuously and the actual number of internet pages is estimated to be between 6 and 8 billion.

With the ease and speed of copying enabled by advanced digital technologies and their virtual dissemination facilitated by the internet, counterfeiting business on the internet has acquired gigantic proportions and the Internet has become an important platform for product and brand piracy and counterfeiting, and a medium for misuse of brands, products and copyrights.

Sale of counterfeits and pirated products via the Internet is not only significant but is also serious. It is estimated that the internet accounts for more than 13% of all incidents of sale of counterfeit and pirated goods. In 2005, India alone accounted for 35 incidents of internet violations amounting to a loss of US$ 1 million. A report by the European Alliance for Access to Safe Medicines (EAASM) claims that 62% of the pharmaceutical products sold online are fakes which poses as major health hazard.

Catching counterfeiters on the internet poses a challenge due to the relative anonymity of online transactions. However, it is possible to trace counterfeit sales online by tracking the route for payment of money for the purchase or by checking the address of the person or entity delivering the product to the customer.

For instance, it is possible to initiate action against the website which advertises or offers counterfeits for sale. Indian Courts have granted orders restraining defendants residing overseas in cases where the infringing activity takes place through a website, such as domain name infringement or online sale of counterfeit goods. In "Tata Sons v Ghassan Yacoub" an injunction was granted against the registration of the domain name '' where the defendant was located in New York.

The exponential expansion of the Indian software and Information Technology industry has opened newer avenues for counterfeiters and pirates to exploit and benefit from. The Internet acts as a façade, whereby consumers and members of trade are not able to interact with vendors of counterfeit or pirated goods thereby making detection nearly impossible. To tackle these threats, traders and manufacturers, in order to protect their goodwill and reputation, are adopting novel techniques like payment and delivery tracking; and innovative technology like barcodes and serialisation although the success of these techniques is yet to achieve significant proportions.


Counterfeiting has indeed become of the most profitable businesses in the world and therefore, is one of the most crucial areas for manufacturers, traders and rights holders to rigorously monitor.

To counter this relentless threat of counterfeiting and piracy, the following suggestions may help in fostering better and stronger administrative cooperation at the domestic and international levels:

  1. Improving Data Collection: Accurate data collection on counterfeiting and piracy helps in identifying trends and patterns, which may further help in clamping down counterfeiting 'hot spots'.
  2. Training: Enforcement agencies and even the Judiciary should be trained to understand the technicalities of counterfeiting
  3. Efficient Judiciary: The Judicial System should be speeded up to ensure that the court cases are expeditiously disposed
  4. Sharing of Information: Countries and International Agencies like WCO, WIPO, WHO, Interpol, etc. should cooperate and share 'best-practices' so that combating piracy and counterfeiting becomes fool-proof.
  5. Increasing Awareness: IP awareness amongst Government Agencies, Trade Associations and even the public at large should be increased and information regarding the dangers and harms of counterfeiting should be freely circulated.
  6. Public-Private Cooperation: Transparent and frequent interaction between private agencies and Government enforcement agencies will help in rapid exchange of information and effective surveillance of the genesis and trends in counterfeiting.

The Indian legal system has an effective legislative infrastructure and robust judicial system but our enforcement agencies are squeezed for resources given the multi jurisdictional nature of counterfeiting and well entrenched criminal networks that have often been seen to have a close nexus with the underworld and even the global terror networks.


1. Hilton International Co. v K. V. Kumar & Anr.; CS (OS) No. 2015/2003.

2. Section 103.

3. Sections 63 & 64.

Ankit Prakash

Ankit Prakash is an associate at Anand And Anand Advocates and specialises in trademark prosecutions, oppositions, assignments, licences and agreements. Mr Prakash has a bachelor's degree in commerce from Shri Ram College of Commerce and an LLB from the Faculty of Law at the University of Delhi. He also has an LLM in intellectual property from Queen Mary & Westfield, University of London and is a part-qualified trademark attorney with the UK Institute of Trademark Attorneys. Mr Prakash has been a member of the Bar Council of Delhi since 2005.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

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.