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.

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