CRIMINAL REMEDIES UNDER IP LAW

P. ILANANGAI

PATENT DEPARTMENT

Altacit GlobalEmail: info@altacit.com Website: www.altacit.com

INTELLECTUAL PROPERTY

• Intellectual property is any innovation, commercial or artistic, or any unique name, symbol, logo or design used commercially.

• Intellectual Property Rights are the legal rights that are granted to a person for any 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 of time.

• The owners of Intellectual Property are granted certain exclusive rights through which they use their property without any disturbance and can prevent the misuse of their property.

•  In India, Intellectual Property is governed under • The Patents Act, 1970; • Trademarks Act, 1999; • Copyright Act, 1957; • Designs Act, 2000, etc.

INTELLECTUAL PROPERTY LAWS OF INDIA

• India have codified and enacted laws on all subjects relating to the Intellectual Property including laws on Trade Marks, Copyright, Industrial Designs, Patents, Geographical Indications and Information Technology. All intellectual property laws of India are in parity with international laws, conventions and other countries.

ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS

• Ideas, concepts, expression, intellect, creativity, the intangible forms of human capabilities are treated as tangible property capable of being owned by their creators in the same manner as any tangible object is and, therefore, like any other property, need to be protected by law.

•  A strong IPR regime helps attract new investment and allows innovators to develop new technologies. It is, therefore imperative that any law providing for the protection of intellectual property also provides strategic remedies for prevention of it’s infringement through effective enforcement measures. contd..

• The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral agreement on intellectual property. The provisions on enforcement are contained in Part III of the Agreement.

• Criminal procedures• The fifth and final section in the enforcement chapter of

the TRIPS Agreement deals with criminal procedures. According to Article 61, provision must be made for these to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale.

contd…

• Sanctions includes imprisonment and/or monetary fines sufficient to provide a deterrent, consistent with the level of penalties applied for crimes of a corresponding gravity. Criminal remedies in appropriate cases includes seizure, forfeiture and destruction of the infringing goods and of materials and instruments used to produce them.

REMEDIES

• Enforcement of IP rights may be accomplished by the IP owner bringing a lawsuit against an alleged infringer.

• When there is a violation or an infringement of an intellectual property, it becomes the sole right of the Intellectual property holder to obtain a remedy for the infringement of something that he has acquired with a lot of hard work and tremendous efforts. Hence it is necessary to grant remedies to the intellectual property holders.

• The remedies granted to the Intellectual Property holders are of three types: Criminal, Civil and Administrative Remedies.

IPR ENFORCEMENT LAWS IN INDIA

• The general laws in relation to Intellectual Property Enforcement in India are mainly the following:

• Code of Civil Procedure• Indian Penal Code• The Civil and Criminal Rules of Practice.• While Civil Procedure Code provides for the civil

remedies and enforcement through civil courts, the Indian Penal Code provides for penal remedies.

• Although civil remedies that may provide compensation to the rights holders are available, criminal sanctions are often warranted to ensure sufficient punishment and deterrence of wrongful activity.

PATENTS

• A patent grants exclusive rights to a patent holder to use their invention and they will be able to take legal action against anyone who uses it without their permission.

• A suit for enforcing a patent-• can be filed before a District Court having

jurisdiction to try the suit.

• can be instituted only after the grant of the patent. • is vested with any person who holds a valid claims

on the subject matter of the patent.

contd…

• Courts generally take into account various factors, which includes:-

• The scope of claim;• Whether the alleged act of the infringement

constitutes an infringement of the monopoly recognized under the patents.

• Remedies:• A patent owner can ask for injunction, damages

or account of profits and not as punishment to the infringer.

• No criminal remedies awarded under the patent law in India.

TRADEMARKS

• The Trade Marks Act, 1999 provides for a comprehensive scheme whereby those persons who un-authorizedly deal with the trade marks can be punished for various offences.

• The offences includes:-• Falsely applying trademarks;• Selling goods or providing services to which false

trademark or false trade description is applied;• Falsely representing a trade mark as registered;• Falsification of entries in the register etc.

• Remedies:• Under the trademark laws, the police have the power to

suo moto conduct raids and seizure operations. • Under the criminal laws, should the rights holder not be

aware of the details of the infringers, it is advisable to procure a general search and seizure warrant from the local magistrate and thereafter organize search and seizure operations in that area.

• In the alternative, should the rights holder be aware of the details of the infringer a complaint can be lodged with the police authorities and raids organized accordingly.

• The minimum imprisonment that an infringer can get under The Trade Marks Act, 1999 is of 6 months and minimum of Rs.50, 000 which may extent to a maximum of 3 years and up to 3 lakhs.

COPYRIGHT

• Infringement of copyright in respect of an artistic work consists in doing or authorizing the doing of any of the following acts without the consent or license of the copyright owner:-

• To make an adaptation of the work;• To include the work in any cinematographic

film;• To reproduce the work in any material form;• To communicate the work to the public;• To issue copies of the work to the public etc.

• Remedies:• Court has the power to direct

seizure of the infringing works as well as all other tools, accessories and containers etc., which are for the purpose of the Act treated as the property of the copyright holder and can, direct them to be handed over to him.

• Copyright infringement is a cognizable offence punishable with an imprisonment upto 3 years and a fine extending upto Rs.2 lakhs. Recent amendment have made the imposition of punishment to a minimum term of 6 months and a fine of Rs.50,000 mandatory unless for special reasons to be recorded if the magistrate awards lesser punishment than the minimum.

DESIGN

• The Designs Act, 2000 provides that any fraudulent or obvious imitation of a registered design without the consent of the proprietor is unlawful and also prohibits the import of such material which closely resembles a registered Design.

• In a civil case compensation payable shall not exceed Rs. 50,000/- in respect of infringement of one registered Design.

GEOGRAPHICAL INDICATIONS

• The criminal remedies may involve punishment to the offender which can be a minimum mandatory sentence of 6 months imprisonment and maximum of 3 years and the minimum mandatory fine of Rs.50,000/- and a maximum of Rs.2 lakhs. In case of subsequent convictions of the same offence, the minimum mandatory sentence will be one year imprisonment and fine of Rs.2 lakhs.

• Under criminal remedies, a complaint can be filed either with the

(i) Court of a Magistrate against unknown persons with a view to obtain and provide directions to the Police to register a case, investigate and carry out search and seizure operation/s; or

(ii)Local Police directly. Upon being satisfied that the named entity is committing any of the offences complained of, the Police may, without the order of the Court, carry out a ‘Search & Seizure’ operation. The local Police may insist on an opinion from the Registrar of Trade Marks (as provided under the Trade Marks Act, 1999) before proceeding in the matter. The proceedings, after the ‘Search and Seizure’ progress to their logical conclusion. Further prosecution entails framing of charges, examination of witnesses and arguments.

• Conclusion With intellectual property

laws already in force, the right holders of the intellectual properties should be encouraged to participate in enforcement actions. The civil and criminal remedies available should be such that they not only compensate the right holder for the losses suffered [including quantum of damages awarded by the court], but should also act as a deterrent for infringers form engaging in illegal activities.

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