WHAT CRIMINAL REMEDIES ARE AVAILABLE AGAINST WILLFUL COPYRIGHT AND TRADEMARK INFRINGEMENT IN INDIA?

INTRODUCTION

IP rights are the bedrock of innovation, creativity, and fair competition in any economy. In India, the copyright and trademark laws protect authors and brand owners by providing them rights in their works/marks and also protecting them from other people using them. However, where the violation is intentional, commercial, and willful, civil remedies alone may be inadequate to prevent such evasion or to deter. These are recognized, and accordingly, under Indian law, criminal remedies exist for which imprisonment and monetary fines can be imposed upon an offender who has committed a willful act of infringement or counterfeiting of intellectual property. These criminal provisions are an example of the legislature’s desire to promote and safeguard honest trade and commerce, market purity, and fair play in transactions with the public in genuine goods and services.

CRIMINAL REMEDIES FOR COPYRIGHT INFRINGEMENT

Under the Copyright Act, there are criminal offenses provided in Chapter XIII (Section 63 and following). Some of the key features are:

· Section 63: If any person “knowingly” infringes, or abets in the infringement, of copyrighted works (or any of the rights under the Copyright Act), then that person would be liable to criminal charges.

· Penalties: For the first offense, the offender can be imprisoned for not less than six months and not more than three years and fined not less than 50,000 rupees and not more than 2 lakh rupees.

· Repeat offenders: Where the act of infringement is of a repeat nature, as noted, minimums will increase (for example, minimum 1 year), and fines will also be increased.

· Search & Seizure: The law empowers police officers (usually sub-inspector or higher) to, without the necessity of a warrant, seize infringing copies, forgery plates, molds, blocks, negatives, and other reproducing devices, in appropriate cases, before further action is taken.

· Willfulness / Commercial gain: The provisions show that for infringing or aiding and abetting infringement to be measured as a criminal act, it must be “knowingly” infringing. Courts may impose lesser penalties for non-commercially made acts of infringement.

· Objective: These criminal provisions align with India’s requirement under Article 61 of the TRIPS Agreement that member states provide criminal procedures and penalties in at least cases of known copyright infringement and trademark counterfeiting on a commercial scale.

Practical implications for rights holders: For rights holders, it is important to document proof of commercial scale, known infringement, and repeat infringements. For example, contacting the police or customs at an early stage could result in faster seizures of infringing goods. Proceedings in criminal actions may occur simultaneously with proceedings in civil cases.

CRIMINAL REMEDIES FOR TRADEMARK INFRINGEMENT

The Trade Marks Act, 1999 (TMA), has criminal provisions for imposing criminal liability for serious trademark offenses such as counterfeiting, falsely applying a mark, etc. The principal provisions are:

· Sections 101-104 & 115 relate to offences such as falsification of a registered trademark, use of a mark deceptively similar to a registered trademark, falsely applying a trade description, etc.

· Section 103: Criminalizes falsely applying a trademark or trade description, or “making or possessing instruments” for falsifying a trademark or trade description.

· Section 104: Prescribes the penalty for these offenses under section 103, which is imprisonment for not less than six months but not more than three years and a fine of not less than ₹50,000 (but not more than ₹2 lakh in the case of the first offense). In the case of a second or subsequent offense, imprisonment will be greater than three years and/or a greater fine.

· Search and Seizure (Section 115): The Registrar of Trademarks can provide an opinion, and the police can conduct searches and seizures of goods or materials the officer reasonably believes are used in the commission of an offense.

· Cognizability: Some offenses under the TMA are cognizable, or in instances where police can arrest without a warrant and investigate and act immediately.

Rights-holder strategy: When counterfeiting or large-scale misuse of a registered mark is detected, rights-holders should alert the Registrar and the police, gather evidence of commercial activity, and consider filing a criminal complaint in tandem with civil infringement suits. The criminal threat adds deterrence beyond civil damages.

COMMONALITIES AND PRACTICAL CONSIDERATIONS

· Willfulness / Knowledge: Both acts are predicated on knowledge or willful infringement. Incidental or inadvertent uses may warrant civil liability but cannot justify a criminal warrant.

· Parallel proceedings: Civil and criminal remedies can run together. Pursuing one doesn’t preclude the other.

· Seizure and deterrence: Criminal law allows for pre-emptive action—seizure of infringing goods, devices, and machinery prior to final judgment—to protect rights holders and the public interest.

· Repeated offenses: Increased penalties may apply on the second and subsequent offenses under both acts.

· Size of infringement: Although practically unconstitutional in the Acts, in practice, some types or large-scale breaches are more likely to lead to prosecution.

· Enforcement challenges: There may be a robust law but practical enforcement may face delay, evidentiary liabilities, jurisdictional issues; even the rights-holder must be proactive and strategic.

LIMITATIONS AND CHALLENGES

· Burden of proof: Proving “knowingly infringing” may be more complicated than proving breach; rights-holders must show intent/knowledge.

· Resources and time: Criminal prosecutions may impose considerable time, resources, and coordination with the police/registrar.

· Recovery of penalties: Although a fine may be ordered, collecting from a person will usually be difficult.

· Jurisdictional issues: The infringing activity may take place across multiple states or online, which may complicate the issue.

· Public interest vs private claim: Particularly in the area of copyright, it is necessary to balance public-interest exceptions, such as fair use and educational use.

CONCLUSION

In India, the Copyright Act, 1957, and the Trade Marks Act, 1999 both provide criminal remedies against willful, commercial infringement of copyright and registered trademarks. Criminal penalties include jail terms (which may be from six months to three years), fines (₹50,000 to ₹2 lakh or more), and search and seizure powers. For right-holders faced with organized counterfeiting or piracy, the availability of criminal action alongside civil relief exists as a particular and powerful deterrent to infringement. But prosecuting cases of willful infringement requires evidence that displays intent/knowledge, coordination with enforcement officials in their enforcement pursuant to the statutes, and a reasonable estimate of resources available for prosecution. The criminal laws as a whole demonstrate India’s commitment to the protection of intellectual property and combating systemic infringement.