ANALYSIS OF CRIMINAL REMEDIES IN IPR INFRINGEMENT

AUTHOR: SUHANI DAS, A STUDENT OF KIIT LAW SCHOOL, KIIT DU

TOPIC: ANALYSIS OF CRIMINAL REMEDIES IN IPR INFRINGEMENT

ABSTRACT

This article delves into the analysis of criminal remedies available for IPR infringement, emphasizing the distinction between civil, criminal, and administrative remedies. It explicates the legal avenues accessible to IP holders to pursue criminal action against violators, highlighting specific sections within the laws governing Patents, Trademarks, and Copyrights that delineate penalties, imprisonment, fines, and procedural aspects associated with criminal proceedings. The article navigates through landmark legal cases, highlighting interpretations and applications of relevant sections from the Copyright Act and Trademark Act. It underscores the nuances surrounding the initiation of criminal proceedings, the necessity (or lack thereof) of IP registration as a precondition, and the varied implications for both registered and unregistered intellectual property.

Moreover, it addresses pertinent issues such as the challenges in identifying offenders in the digital age, the efficacy of criminal actions in deterring infringement, and the dichotomy between the advantages of criminal remedies and their limitations, notably the absence of compensatory provisions for IP holders. Conclusively, while advocating for the efficacy of criminal remedies, the article accentuates the need for cautious utilization due to its complex nature and potential counter effects if misused. It underscores the importance of judiciously leveraging criminal recourse while acknowledging its limitations and the imperative role of civil remedies and cautious application.

Keywords: Infringement, Copyright, Trademarks, criminal, remedies. 

INTRODUCTION

Intellectual Property means a property created through human intellect (skill, creation, etc.). Intellectual Property Rights are exclusive legal rights given to a person for creative and artistic work, for any invention or discovery, or for any literary work or words, phrases and symbols or designs for a stipulated period. These exclusive rights are given in order to ensure that the IP holders can use the intellectual property solely and without any disturbance. This is also given as a form of reward for encouragement of such creative and artistic work, literary work, invention, etc. The various types of Intellectual Property are trademark, patents, copyright, industrial design, geographical indications, trade secrets, integrated circuits, etc. In India the Intellectual Property is governed through various legislatures such as Patents Act, 1970; Trademarks Act, 1999; Copyright Act, 1957; Designs Act, 2001, etc.

RIGHTS GRANTED TO IP HOLDERS

People who seek the protection of their intellectual property to avoid any interruption in the use of his property. The creators of any invention, or a mark or a literary or creative work spend money as well as time for creating the Intellectual Property, hence, they should also be granted certain rights like exclusive use of their invention or claiming remedies for the infringement etc. The rights granted to owners, creators and holder of IP are as follows:

  • Patents: When an invention is made in any field, it is of utmost importance to protect it from getting exploited by anybody other than the inventor and the same is possible by obtaining a patent for an invention. A patent grants exclusive rights to a patent holder. The inventors can use their invention and they will be able to take legal action against anyone who uses it without their permission. A patent grants the right to stop others from copying, manufacturing, selling, and importing the invention without the patent holders’ permission.
  • Trademark: A trade mark is a sign which can distinguish the goods and services of the trademark holder from those of the competitors. It can be for example words, logos or a combination of both. Registering a Trademark is not compulsory2. There are two types of trademark – registered and unregistered.
  1. Registered Trademark: Registering a trade mark gives Trademark holder the exclusive right to use his mark for the goods and/or services. A Registered Trade Mark may put people off using the trade mark without the permission of the holders, allows them to take legal action against anyone who uses their trade mark without their permission.
  2. Unregistered Trademark: For the protection of unregistered trademark, if it is not registered, still the holder of an unregistered trademark will be able to take an action against anyone who uses it without his permission through the common law action of passing off. To be successful in a passing off action, one has to prove that the mark belongs to him, he must have built up a reputation in the mark and he has been harmed in some way by the other person’s use of the mark.
  • Copyright: Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematograph films and sound recordings4. In fact, it is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work.

INFRINGEMENT OF INTELLECTUAL PROPERTY

The infringement of intellectual property (IP) refers to the unauthorized use of an owner’s intellectual assets, such as patents, trademarks, and copyrights. This encroachment often aims to exploit the ideas and creations of others for financial gain. In today’s digital age, cases of IP infringement, including counterfeiting and piracy, are prevalent and have global ramifications. Protecting intellectual property is essential to prevent the misuse of ideas and maintain the rights of creators.

  • Patent Infringement: Patent infringement occurs when a patented invention is used, sold, or distributed without the patent holder’s permission. In India, infringement proceedings can be initiated only after a patent is granted. Actions like making, using, or importing a patented product without authorization may result in legal liability. Remedies for patent infringement include injunctions, damages, or an account of profits.
  • Trademark Infringement: Trademark infringement involves the unauthorized use of a trademark that is identical or confusingly similar to an existing one. This violation may occur when the infringer uses the mark in connection with similar goods or services, causing confusion among consumers. Criminal prosecution can be initiated under the Trademark Act, 1999, for offenses such as falsifying trademarks, applying false descriptions, and selling counterfeit goods. Penalties include imprisonment ranging from six months to three years, fines from ₹50,000 to ₹2,00,000, or both.
  • Copyright Infringement: Copyright infringement involves reproducing, distributing, or adapting copyrighted works without authorization. This includes issuing copies, making adaptations, or publicly communicating the work. Under the Copyright Act, 1957, copyright infringement is a cognizable and non-bailable offense, punishable by imprisonment of six months to three years and fines ranging from ₹50,000 to ₹2,00,000. Police officers, not below the rank of sub-inspector, are authorized to seize infringing copies without a warrant.

CRIMINAL REMEDIES AVAILABLE FOR INFRINGEMENT

When an intellectual property (IP) is infringed, it becomes the right of the IP holder to seek remedies for violations of their hard-earned rights. Remedies for IP infringement are classified into criminal, civil, and administrative categories.

  • Patents: A patent infringement suit must be filed in the District Court or High Court, depending on pecuniary jurisdiction, within the territorial jurisdiction where the cause of action arises. If a counterclaim for revocation is filed, only the High Court can entertain the matter. Remedies in a patent infringement suit include injunctions and, at the plaintiff’s option, either damages or an account of profits. The court may also order the seizure, forfeiture, or destruction of infringing goods and materials used in their production, without compensation to the infringer.
  • Trademarks: Trademark proprietors and licensed users can initiate criminal prosecution against infringers for offenses like falsifying trademarks, applying false descriptions, tampering with origin indications, and selling falsely marked goods. The Trademark Act, 1999 (Sections 103-108), prescribes penalties, including imprisonment ranging from six months to three years and fines between ₹50,000 and ₹2,00,000. Section 115 empowers police officers to conduct searches and seizures but requires prior guidance from the Registrar of Trademarks. Criminal proceedings can be initiated through a magistrate or an FIR, and penalties include imprisonment, fines, and confiscation of goods. For faster action, a direct complaint to the magistrate may bypass the procedural requirement of seeking the Registrar’s opinion.
  • Copyright: The Copyright Act, 1957 (Sections 63-69), stipulates imprisonment for infringement, ranging from six months to three years, and fines between ₹50,000 and ₹2,00,000. Repeat offenders face harsher penalties, including a minimum one-year imprisonment and increased fines. Copyright infringement is a cognizable and non-bailable offense, enabling police to register an FIR without prior magistrate approval. A police officer not below the rank of sub-inspector can seize infringing copies and related materials without a warrant. Offenses punishable by imprisonment of three or more years are non-bailable and cognizable, as confirmed by the Bombay High Court in Piyush Subashbhai Ranipa v. State of Maharashtra. The Supreme Court, in State of Andhra Pradesh v. Nagoti Venkataramana, ruled that identifying the copyright owner is unnecessary for initiating prosecution, especially in cases like mass-scale video piracy.

CRIMINAL REMEDIES AND IP REGISTRATION

Criminal remedies for IP infringement do not require registration of the IP. Courts have held that registration is a record of ownership but not a precondition for initiating criminal action. Even holders of unregistered trademarks can file criminal complaints. However, civil remedies for infringement often require registration, though common law actions like passing off remain available.

ADVANTAGES AND LIMITATIONS OF CRIMINAL REMEDIES

Criminal remedies are effective due to the deterrent effect of penalties and the ability to proceed against known or unknown offenders. Police powers, such as search and seizure, are particularly useful in cases of piracy, counterfeiting, and cyber theft, where identifying the wrongdoer is challenging. However, criminal remedies do not provide compensation to the IP holder and lack specialized investigation mechanisms for IP crimes. Misuse of criminal provisions can have adverse effects, and criminal remedies should be employed cautiously.

CONCLUSION

Intellectual Property Rights (IPR) laws in India provide robust civil and criminal remedies for infringement. While civil remedies offer compensatory relief, criminal remedies are more effective for deterring offenses and addressing cases involving anonymity or large-scale violations. Despite their advantages, criminal remedies should be applied judiciously to prevent misuse and ensure justice. Registration of IP, while not mandatory for criminal proceedings, is strongly recommended for better protection and ease of enforcement.

REFERENCES

Section 104 of the Patents Act, 1970

Section 108(1) of the Patents Act, 1970

Section 108(2) of the Patents Act, 1970

Section 29 of the Trademarks Act 1999

Section 28 of Trademarks Act, 1999

Section 14 of Copyright Act, 1957

Section 55 of Copyright Act, 1957

Section 48 of Patents Act, 1970

Section 2(1) (zb) of Trademarks Act, 1999

FAQ:

  1. What are the main types of intellectual property rights (IPR)?

The main types of IPR include patents, trademarks, copyrights, industrial designs, trade secrets, geographical indications, and integrated circuits.

  1. What rights are granted to the holders of intellectual property?

IP holders are granted exclusive rights to use, protect, and prevent others from exploiting their intellectual creations. For patents, trademarks, and copyrights, this includes the ability to take legal action against infringers.

  1. What is the difference between civil and criminal remedies for IPR infringement?

Civil remedies generally involve compensatory relief, such as damages or injunctions. Criminal remedies, on the other hand, involve penal actions such as imprisonment, fines, and seizure of infringing goods.

  1. Do criminal remedies for IPR infringement require IP registration?

No, criminal remedies do not require IP registration. Even unregistered trademarks can be protected under criminal law through actions like “passing off.”

  1. What is the penalty for trademark infringement under Indian law?

Trademark infringement can result in imprisonment for six months to three years, along with fines ranging from ₹50,000 to ₹2,00,000 under the Trademark Act, 1999.

  1. How does copyright infringement differ from trademark infringement in terms of criminal penalties?

Both offenses can lead to imprisonment of six months to three years and fines between ₹50,000 and ₹2,00,000. However, repeat copyright offenders face harsher penalties, including longer imprisonment.

  1. What role do police officers play in IP infringement cases?

Police officers, particularly those of sub-inspector rank or higher, can seize infringing goods and materials without a warrant and can also initiate actions for IP infringement under criminal law.

  1. Can criminal action be initiated against unregistered intellectual property?

Yes, criminal action can be initiated against unregistered intellectual property, such as unregistered trademarks, by filing complaints under the common law principle of passing off.

  1. What are the advantages of criminal remedies for IP infringement?

Criminal remedies serve as a deterrent due to penalties, including imprisonment and fines. They are particularly effective for addressing piracy, counterfeiting, and digital theft where offenders may be anonymous.

  1. What are the limitations of criminal remedies for IP infringement?

Criminal remedies do not provide compensation to the IP holder. Additionally, the investigative mechanisms for IP-related crimes are not as specialized as those for other criminal offenses, making it challenging to identify offenders in complex cases.

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