Trade Marks rights are enforced in courts by resorting to Civil Remedies and Criminal Remedies. The administrative authorities under Customs and Food & Drugs administration can also be of help in enforcement of trade marks rights. My below mentioned note covers procedure for enforcement of rights through Criminal process.
CIVIL REMEDY: Civil Suit is filed for injunction and for claiming damages against the infringer / counterfeiter. This remedy is in addition to the Criminal Remedy as mentioned below.
CRIMINAL REMEDY: by filing complaint for seizure of infringing material and for punishment to the infringer / counterfeiter. The main objective of criminal complaint and raid is to create deterrence of criminal prosecution to the counterfeiters who are businessmen and would therefore not want to be behind bars or get arrested and to get defamed in the market. In fulfilling these objectives, the strategic raid should be conducted with proper planning. At a time we should be calm and patient, and should be aggressive depending upon the circumstances.
RAID IS CRIMINAL REMEDY: PROCESS:
• Information of Counterfeiter, Counterfeit Samples and our Original Samples are forwarded by Internal Dept to Legal Department of company.
• Detective Agency is appointed on seeking approval of Internal Dept of the Company. The Detective Agency person or any authorized person is authorized by letter of authority on behalf of the Company for filing criminal complaint and for conducting raid with the help of Police.
• The Complaint may be filed under the Copyright Act or under Trademarks Act with the assistance of jurisdictional Police Station or Criminal Court where the counterfeiter resides or conducts its business.
• The complaint is filed in two ways 1) before Criminal Court and 2) before Police Officer in Police station.
• COMPLAINT BEFORE CRIMINAL COURT U/s 200 CRPC:
o In Criminal Court, the complaint will be filed in the name of company Raymond Ltd and the company (as complainant) has to initiate the process till the conviction of the accused. The Company has to bear awll legal expenses and has to be represented by a competent person as complainant. If the complainant does not attend court the complaint may be dismissed.
The name and address of counterfeiter is disclosed to the court in the complaint. Complaint can also be filed against unknown accused without mentioning the name of the counterfeiter in that case it is difficult for the complainant to convince the police officer or the Court as to how you got to know where about of the counterfeiter after the complaint is directed to Police for investigation.
Further, if the complaint is unknown the Court may join the accused / counterfeiter on the basis of the report submitted by the Police and the same cannot be challenged by us on any reasons. It is upon the police to decide as to whom they should involve as main accused in their report.
o On receiving Complaint, the court will examine the complainant, the evidence, the trademark / copyrights registration details, the facts of the case and then takes cognizance and issues directions to the local police station for conducting raid / investigation and for submitting report thereon to the court (U/s. 156(3) or 202 of Criminal Procedure Code). For filing complaint in court, advocate is to be appointed and so the legal cost would rise. There is no time frame within which the court may (at its discretion) issue directions for investigation / raid to the concerned police authorities. The time may vary from Two to Three months. On receiving directions from the Court the police officer conducts investigation in the same manner (mentioned below) as though the complaint is filed before him. And on investigation Police Officer will submit his report in Court.
• COMPLAINT FILED IN POLICE STATION U/s 154 & 149:
o Detective Agency person will lodge FIR (First Information Report / Complaint) with the jurisdictional Police Station and his statement will be recorded as Complainant in the matter. Copy of the FIR will be given to the complainant.
o Police Investigation Officer will verify the Complainant, evidence / sample products and the certificates of trademarks and copyrights.
o Police may at its discretion choose to conduct raid under Copyright Act or under Trademark act. Under Copyright Act any police officer above the rank of Sub-Inspector of Police (IO) can conduct investigation and raid and whereas under the Trademark Act any person above the rank of Superintendent of Police (IO) can conduct investigation and raid.
o If IO choose to conduct raid under the Trademark Act then before taking cognizance and conducting search and seizure of the counterfeiter’s premises, IO has to obtain prior opinion from the jurisdictional Registrar of Trademark (located at Mumbai, Ahmedabad, Delhi, Kolkatta and Chennai) under Section 115 of the Trademark Act 1999. The opinion is obtained by Police with regard to the validity of the registration and the rights of the Complainant for the subject trademark and whether there exists prima facie case of alleged infringement and counterfeiting against the counterfeiter. The time required for obtaining such opinion may vary (about 1 to 2 months) with the jurisdictional Registrar of Trademark. The Opinion is obtained in sealed confidential cover under the provisions of Trademark Act 1999. There is no such procedure for obtaining opinion under Copyright Act 1957.
o Depending upon the trade mark opinion, availability of the Police force and with the permission of the Senior Officers the Police Investigation Officer may proceed with the investigation. The Police Investigation officers (IO) have discretionary power whether to conduct the raid or not even though the offence is cognizable. IO may also refuse to conduct raid with the reason of non availability of the adequate task force, the case does not merit conducting raid or arrest of the counterfeiter. Police IO may simply call the Counterfeiters to the Police Station and informs him about the complaint filed against him. Police may also advise the complainant to approach Criminal Court for filing necessary complaint and direction from the court for arrest of the counterfeiter if there is any Political Clout involved.
o RAID: IO will conduct investigation about the Complaint and the accused / counterfeiter. In the process of investigation the premises of the counterfeiter is raided.
The duplicate material is sealed, seized by Police after noting seizure report / Panchnama in front of two witnesses. The seized material remains in the custody police till the conclusion of the criminal proceedings as evidence or IO may ask the complainant to execute bond and hand over custody of seized material to him with instruction to submit it in court on demand.
The offence (u/s.102 and 103 of Trademark Act and U/s. 63 of Copyright Act) is Cognizable, Non-Bailable and Warrant triable. The accused person is arrested and detained till he is produced before Court within 24 hours. Though the offence is Non-Bailable, it at the discretion of the Court to grant bail. Bail is usually granted if the seized goods are other than the food, drug and cosmetics that will not have any adverse effect on the health and hygiene of the general public.
After conducting raid Police Report / Charge sheet is filed by Investigation Officer (IO). Then this Criminal Case will be conducted by Police with the help of Govt Lawyer - Public Prosecutor. The Company will have no role to play except to furnish evidence when called by the court.
The State through the public prosecutor begins prosecution of the accused on the basis of police report / Charge sheet. The evidence of the complainant (Detective Agency) will be led along with the two witnesses / panchs. Time frame for completing examination, cross examination and evidence cannot be ascertained. We cannot guess as to how many times the (Detective Agency Person) witness will be called by the Court as witness. The accused may file its exemption and discharge application in Court requesting to relive him against the charges and to delay proceedings of the case. The police would take about 5-6 months time for submitting its report to the Court. Then Police report / charge sheet and statements will be available to us from Court in about 15 days after matter is listed on board.
Based on the evidence led the accused will be convicted or acquitted by the Court. The final decision in the matter i.e. conviction or acquittal of the accused will take minimum four to five years depending upon the pendency of proceedings before the Court.
On conviction the accused will be punished with minimum imprisonment of six months which may extend to three year and with fine (paid to State) which shall not be less than Rs.50,000/- but may extend to Rs2,00,000/-.
• POST RAID ACTION BY DETECTIVE/AGENCY:
o After raid FIR / Complaint will be provided by the Detective Agency along with their RAID REPORT to the company.
o The Detective Agency person (complainant) will attend court proceedings on behalf of Company on receiving Summons from Court as witness. For attending the Court date separate charges will be paid to complainant along with the other incidental expenses of lodging and boarding, traveling & other expenses.
• POST RAID ACTION BY COMPANY:
o After raid is over the Company should dump its stock in the market where raid is conducted to meet the demand of market since there would be supply crunch due to seizure and it is also essential to capture the market.
• RISKS / HINDRANCES INVOLVED:
o Due to Political Clout and influence, Police may get a set back.
o There would be Physical resistance and force from the Counterfeiter.
o Police may be reluctant for raid. The Police may refuse to co-operate or delay the process of raid. Police may support the local people.
o Local Trade Union may oppose the raid and create hindrances in arrest of the counterfeiter.
o The counterfeiter may not have adequate stock of counterfeit goods with him. So the raid may be futile.
o Raid could be delayed due to the process of obtaining approvals from the concerned departments of POLICE / Trademark Registry.
o The information may be leaked through any person (our internal person, police detectives) in the process of raid and surprise raid on the counterfeiter could not happen.
o The time and schedule for conducting raid is at the discretion of the POLICE authorities so the same cannot be pre-planned.
o No person can interfere within the functioning of the POLICE and the Honorable COURT's in India as they have their own statutory power, discretion, obligations and preferences over the legal matter within their jurisdiction so we cannot have control or expedites process through them.
• NEWS / PRESS Release:
o The incidence of raid / action initiated by Company may be published by NEWS CHANNELS and PRESS by themselves.
o Company should decide whether such action should be reported by the company in NEWS or PRESS as publication as the same would following effects:
Deterrent effect on the other counterfeiters involved in illegal trade.
the accused may file defamation suit against the company if his name is falsely or wrongly involved in the matter.
such publication may adversely effect the image of the brand and create suspicion about the genuineness and quality of the product in the mind of consumer.
• COST: The approximate cost for conducting raid when entrusted to detective agencies is about INR 1 to 2 lacs.
• REQUIREMENTS:
o Two samples of counterfeit products
o Two samples of our original products
o Expert Analysis Report of Counterfeit products
o Trademark / Copyright certificates
o Letter of authority in the name of Detective Agency
Sunday, August 29, 2010
Sunday, August 22, 2010
Parallel Import & Copyright Infringement in India
Proposed Amendment to “The Copyright Act 1957” -- Clause (m) of Section 2 of the Act, which defines the expression "infringing copy" as a reproduction of a literary, dramatic, musical or artistic work or a copy of a cinematograph film made on any medium by any means or any other recording embodying the same sound recording, made by any means or the sound recording or a cinematographic film of broadcasting of a programme or performance if reproduction of sound recording is made or imported in contravention of the provisions of the Act.
It is proposed to insert a proviso (add NOT) to the aforesaid clause so as to provide that a copy of a work published in any country outside India with the permission of the author of the work and imported from that country into India shall not be deemed to be an infringing copy.
Few commercial institutions and industrial organizations are likely to submit their objections against this proposed amendment to meet their commercial gains. Presently, import of Copyright material in India without permission of the owner/licensor amount to infringement.
My personal views in favour of amending the Section 2(m) are as follows:
1. The issue of Parallel import is not at all the subject matter of Copyright. It should be provided in other statutes like Trademark Act, Customs Act, Competition Act or by enacting new legislation for the same etc.
2. Custom Authorities in India are not custodian/record keepers of the Copyright Licenses granted by owners. Customs authority cannot decide whether the license is appropriate or whether the imported product is genuine or counterfeit. If any infringing/counterfeit Copyright work is being imported in India the exclusive licensee or the owner or his representatives’ licensee can approach the Registrar of Copyright with the complaint of infringement under Section 53. It is correctly provided under the new proposed amendment to Section 52 that the copyright Owner should obtain order of the court within fourteen days of such detention by Customs.
3. Needless to mention that the “Copyright” is owners’ right and it comes into existence the moment it is created. Its registration with any particular country is optional and has only evidentiary value. Copyright has acquired wider recognization, acceptance and protection from the Convention countries.
4. Copyright is only the universal right which is well protected and recognized by all convention countries of the world without registration. Such recognization is available to the owner of copyright so that he can exploit his work to the maximum possible extent in the interest of society/country in which it is published / communicated.
5. Exploitation of Copyright enriches society in the form of knowledge, art, literature; music, innovations etc. It also influences culture of the society. It is the owner, who decides his reward/consideration and the extent of commercial exploitation of his Copyright by way of assignment or licenses with its territorial jurisdictions.
In view of the above, owners of Copyright should be liberal in granting as many as licenses as possible in India for effective exploitation of his work so as to earn royalty revenue by providing social benefits in returns to the society. Such rights should not be withheld by the owner for any commercial gains.
What if the owner fails to exploit his work effectively why should any society or country like India suffer?
Why should state/restrain fair dealing with the Copyright material produced by the Owner of the work in foreign country?
Why the work published in foreign country should have any entry barrier in our county when it does not amount to infringement in the foreign country?
Why should the original Copyright work be considered as infringed material even if it is imported without the permission of the owner?
Under the provisions of the Act, the permission of the owner is required for reproduction and publication of the work and not for selling the published work.
For instance, if there is any need/demand for any music, novel, text, (e.g Harry Potter) or any research book of prime importance, what should consumer do? If the same work is not available in market. What if the foreign licensor does not want to grant any licenses in India or he choose to exploit the same in selective countries with higher premium? If at all the license is granted and the monopolistic licensee intentionally does not exploit the Copyright work nor he is capable with his limited resources to exploit it. What is the option available to the Indian public? I feel the available option is to legally import it by paying the Cost for the work or purchase the pirated versions of the same work.
6. The Infringement issue will arise only if substantial reproduction of the work is done by any person without the consent of the owner or exclusive licensee. Infringement is statutorily covers only creation/reproduction and not selling. Selling genuine work/product will not amount to infringement.
7. Section 31 of the Copyright Act provides Compulsory licenses only in respect of any Indian work withheld from the Public. The copyright board has no jurisdiction or power to decide about any published foreign work and withheld from public by the owner or the exclusive licensee. Why can’t Copyright Board decide appropriate license fee and grants license for publication of the foreign work? as it does for Indian work?
8. The only exception to this is Section 32(1A) and 32A which allows publication of translations of the work (other than Indian) only for teaching, scholarship or research purpose and only after period of three years of its first publication. However such work is not available for export. Why there is no such restriction on export of Indian work published in India?
9. The principle of reciprocity is provided in Section 40 and 42 of the Act, however this principal is not implemented in respect of the foreign work.
In view of the above, I feel that the amendment to Section 2 (m) referred above is in the interest of our country so should not be opposed. The Parallel Import / Counterfeiting is effect of in-equilibrium between Demand and Supply. If the Demand exceeds supply then vacuum is created wherein counterfeit products find its way.
In such situation, the owner/licensor should meet demand of its original products by effective licensing /imports and managing sufficient supply with appropriate product cost. This would act positive anti-counterfeiting tool
Regards
Santosh Mane
23/08/2010
It is proposed to insert a proviso (add NOT) to the aforesaid clause so as to provide that a copy of a work published in any country outside India with the permission of the author of the work and imported from that country into India shall not be deemed to be an infringing copy.
Few commercial institutions and industrial organizations are likely to submit their objections against this proposed amendment to meet their commercial gains. Presently, import of Copyright material in India without permission of the owner/licensor amount to infringement.
My personal views in favour of amending the Section 2(m) are as follows:
1. The issue of Parallel import is not at all the subject matter of Copyright. It should be provided in other statutes like Trademark Act, Customs Act, Competition Act or by enacting new legislation for the same etc.
2. Custom Authorities in India are not custodian/record keepers of the Copyright Licenses granted by owners. Customs authority cannot decide whether the license is appropriate or whether the imported product is genuine or counterfeit. If any infringing/counterfeit Copyright work is being imported in India the exclusive licensee or the owner or his representatives’ licensee can approach the Registrar of Copyright with the complaint of infringement under Section 53. It is correctly provided under the new proposed amendment to Section 52 that the copyright Owner should obtain order of the court within fourteen days of such detention by Customs.
3. Needless to mention that the “Copyright” is owners’ right and it comes into existence the moment it is created. Its registration with any particular country is optional and has only evidentiary value. Copyright has acquired wider recognization, acceptance and protection from the Convention countries.
4. Copyright is only the universal right which is well protected and recognized by all convention countries of the world without registration. Such recognization is available to the owner of copyright so that he can exploit his work to the maximum possible extent in the interest of society/country in which it is published / communicated.
5. Exploitation of Copyright enriches society in the form of knowledge, art, literature; music, innovations etc. It also influences culture of the society. It is the owner, who decides his reward/consideration and the extent of commercial exploitation of his Copyright by way of assignment or licenses with its territorial jurisdictions.
In view of the above, owners of Copyright should be liberal in granting as many as licenses as possible in India for effective exploitation of his work so as to earn royalty revenue by providing social benefits in returns to the society. Such rights should not be withheld by the owner for any commercial gains.
What if the owner fails to exploit his work effectively why should any society or country like India suffer?
Why should state/restrain fair dealing with the Copyright material produced by the Owner of the work in foreign country?
Why the work published in foreign country should have any entry barrier in our county when it does not amount to infringement in the foreign country?
Why should the original Copyright work be considered as infringed material even if it is imported without the permission of the owner?
Under the provisions of the Act, the permission of the owner is required for reproduction and publication of the work and not for selling the published work.
For instance, if there is any need/demand for any music, novel, text, (e.g Harry Potter) or any research book of prime importance, what should consumer do? If the same work is not available in market. What if the foreign licensor does not want to grant any licenses in India or he choose to exploit the same in selective countries with higher premium? If at all the license is granted and the monopolistic licensee intentionally does not exploit the Copyright work nor he is capable with his limited resources to exploit it. What is the option available to the Indian public? I feel the available option is to legally import it by paying the Cost for the work or purchase the pirated versions of the same work.
6. The Infringement issue will arise only if substantial reproduction of the work is done by any person without the consent of the owner or exclusive licensee. Infringement is statutorily covers only creation/reproduction and not selling. Selling genuine work/product will not amount to infringement.
7. Section 31 of the Copyright Act provides Compulsory licenses only in respect of any Indian work withheld from the Public. The copyright board has no jurisdiction or power to decide about any published foreign work and withheld from public by the owner or the exclusive licensee. Why can’t Copyright Board decide appropriate license fee and grants license for publication of the foreign work? as it does for Indian work?
8. The only exception to this is Section 32(1A) and 32A which allows publication of translations of the work (other than Indian) only for teaching, scholarship or research purpose and only after period of three years of its first publication. However such work is not available for export. Why there is no such restriction on export of Indian work published in India?
9. The principle of reciprocity is provided in Section 40 and 42 of the Act, however this principal is not implemented in respect of the foreign work.
In view of the above, I feel that the amendment to Section 2 (m) referred above is in the interest of our country so should not be opposed. The Parallel Import / Counterfeiting is effect of in-equilibrium between Demand and Supply. If the Demand exceeds supply then vacuum is created wherein counterfeit products find its way.
In such situation, the owner/licensor should meet demand of its original products by effective licensing /imports and managing sufficient supply with appropriate product cost. This would act positive anti-counterfeiting tool
Regards
Santosh Mane
23/08/2010
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