Authored By: G S Shrinithi
Neutral Citation No.: 2024:PHHC:155158
The Punjab and Haryana High Court's judgment in Arun Kumar v. State of Punjab and Another, delivered by Justice Karamjit Singh, highlights the challenges in enforcing intellectual property laws. It demarcates copyright law and trademark law. This landmark ruling addresses the misuse of intellectual property provisions and procedural shortcomings in enforcement. The court in this case dismissed the charges, highlighting the need for proper interpretation of intellectual property law in India.
Factual Background
In this case there were allegations against Arun Kumar, who was accused of manufacturing and selling garments under a counterfeit label of the popular brand Puma. Based on a complaint received from Puma, the police raided Arun Kumar's premise where they found counterfeit goods and arrested him. An FIR was registered against him under Sections 63 and 65 of the Copyright Act, 1957. In the trial stage, the trial court further added charges under Sections 103 and 104 of the Trade Marks Act, 1999.
Arun Kumar filed a petition under section 482 of Code of Criminal procedure. He argued that copyright act didn't apply in this case and the procedural requirements laid down in Trademarks act was not followed. Hence, he filed for quashing of FIR, the final report by the police and the trial court order.
Issues Before the Court
Two main issues before the court:
- Whether the manufacture and sale of garments bearing a counterfeit label constituted a violation of the Copyright Act, 1957.
- Whether the investigation and prosecution under the Trade Marks Act, 1999, complied with the procedural requirements mandated by law.
Analysis of Copyright Law
The main issue in this case is whether copyright law applies to counterfeit goods or not. Section 13 of the Act provides copyright protection only to specific types of works, such as literary, dramatic, musical, and artistic works, as well as films and sound recordings. The Court in this case held that simply making and selling garments does not come under these categories mentioned under section 13 unless the garments include original artistic elements, in which case they may qualify for copyright protection.
Copyright act in india is restrictive and this has been demonstrated by the Indian judiciary. In Time Warner Entertainment Co. v. RPG Netcom Globe1, the High Court clarified that copyright protection cannot be granted over future works which are not explicitly covered under the statute. The Court held that Sections 13, 14, and 16 of the Copyright Act, when read together, make the legislature's intent to keep it restrictive. Hence, no copyright claim can be made based on customary rights or practices not expressly outlined in the statute.
The rigidity of the statute has also been discussed in other cases as well. In Fortune Films International v Dev Anand2 the Bombay High Court denied a claim brought by an actor seeking copyright protection over his performance in a movie, holding that copyright protection does not extend to areas that are not mentioned in section 13. Further, in Camlin (P) Ltd v National Pencil Industries3, the Delhi High Court refused to grant copyright protection for an artist who painted on a carton, further strengthening the principle that copyright is limited to the categories mentioned in section 13.
Although this approach has been followed for a while, some scholars argue for a more expansive approach when dealing with copyright. They argue that it should be expanded as India is also part of the Berne convention which advocates for protection of creative works. Unfortunately, till the legislature decides to broaden the scope, the judiciary is bound by the law4.
The judgment in Arun Kumar further confirms this principle that copyright law in India is not meant to serve as a one-size-fits-all solution for intellectual property disputes. The Court held that counterfeit goods with a logo fall under the trademark law, and not copyright law.
Analysis of Trademark Law
The second issue focuses on whether the investigation and prosecution complied with the procedural requirements mandated under the Trade Marks Act, 1999. Section 115 of the Act deals with the specific guidelines that has to be followed while handling a trademark infringement case. Under this section the investigation has to be carried out by a police officer of at least the rank of Deputy Superintendent of Police (DSP) and the investigating officer before conducting the investigation has to seek the opinion of the Registrar of Trade Marks.
In this case, the investigating officer did not seek the opinion of the registrar, hence violating the provision. This became the central point of challenge against the charges under Sections 103 and 104 of the Trade Marks Act. The Court favoured the petitioner by ruling that the failure to comply with the procedure mandated by law, the whole investigation was invalid and against the law.
Several cases have addressed this issue previously. In Shrenik Shantilal Dhadiwal v. The State of Maharashtra and Others5, the Bombay High Court held that the police officer must obtain the Registrar's opinion under section 115(4) before conducting search and seizure operations.
The Rajasthan High Court, in Pitambra Industries v. State of Madhya Pradesh6, further held that the investigation held without the registrar's permission was illegal. The Court held that the requirement to obtain the Registrar's opinion is a sine qua non and any search and seizure under Sections 103, 104, and 105 of the Trade Marks Act have to follow proper procedure. These cases emphasis that section 115(4) is not a mere procedural formality but a mandatory condition that has to be fulfilled.
However, there are certain cases which take a different view on the matter. For example, in State v. Sanjay Malhotra7, the Delhi District Court held that non-compliance with the Registrar's opinion under Section 115(4) does not necessarily vitiate the proceedings unless the accused demonstrates substantial prejudice was caused to him. This case highlights a degree of flexibility in applying the provision, especially in cases where there is a clear trademark infringement.
The implementation of Section 115(4) of the Trade Marks Act has faced significant challenges despite there being clear statutory requirements under the act. The Parliamentary Standing Committee in its report highlighted that delays in obtaining the Registrar's opinion often slow down search and seizure operations which in turn gives the infringers time to relocate or dispose of the counterfeit goods. There exists a lack of set timeline for the Registrar to provide an opinion, which further stifles the process.
The Arun Kumar judgment brings back the focus on the importance of procedural safeguards under Section 115(4). However, it also highlights the difficulty of balancing the procedural requirement and the timely enforcement. This highlights the need for the legislature to bring about changes to deal with the challenges.
Judicial Approach to Balancing Interests
The judgment focuses on balancing the rights of intellectual property holders with the procedural rights of accused individuals. On one hand, intellectual property rights focus on encouraging creativity and innovation, but on the other hand they should not compromise on the fairness of the procedure.
This approach is particularly important in counterfeiting cases, where large brands often adopt aggressive enforcement strategies against smaller players. By emphasizing procedural compliance, the Court reinforced that intellectual property enforcement must remain within the boundaries of the law and respect the rights of the accused.
Implications of the Judgment
The implications of this judgment are important to understand. First, the ruling clarifies the distinction between copyright and trademark law, ensuring that the right law is applied in the right case. This is important as it prevents any overlapping claims and prevents misuse of the provisions.
Secondly, the judgment also highlights the need to comply with the procedure laid down in the law. The court did so by invalidating the charges against Arun Kumar, which points out the need for stricter enforcement by the authorities. This may push law enforcement agencies to follow statutory requirements more diligently, reducing the risk of misuse and ensuring fair enforcement.
Finally, the decision underscores the judiciary's responsibility to carefully examine intellectual property disputes and protect the rights of accused parties. The Court's intervention in Arun Kumar illustrates the importance of judicial oversight in ensuring that enforcement actions are legally justified and proportionate. This approach promotes greater transparency and accountability in intellectual property enforcement, contributing to a more balanced and fair legal system.
Conclusion
The judgment in Arun Kumar v. State of Punjab and Another is a significant decision as it provides clarity on the interpretation and application of intellectual property rights. The Punjab and Haryana High Court in this case not only defined the boundaries of copyright and trademark protections but also emphasized the need for procedural compliance. This case also upheld the principles of fairness and due process.
This case highlights the judiciary's role in shaping intellectual property law to reflect both societal values and the economic realities of the society. It acts as a reminder that intellectual property enforcement must be balanced and proportionate. The principles laid down in this case are likely to guide the future development of intellectual property jurisprudence in India.
References
Footnotes
4. Nishant Thakur and Sandra Varkey, 'Closed List Approach versus Open-Ended Approach in Subject-Matter Copyright | SCC Times' (SCC TIMES28 March 2021) https://www.scconline.com/blog/post/2021/03/28/copyright-2/#_ftn28 accessed 2 December 2024.
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