Executive and legal regime fight against counterfeiting

Counterfeiting imperils a nation’s economic growth and tarnishes its brand image. India’s recent efforts to develop a robust and well-coordinated executive and legal regime to tackle this menace include the first National Intellectual Property Rights (IPR) Policy, unveiled in May 2016; the creation of IPR cells in state police forces; the launch of the IPR Enforcement Toolkit in January 2017; and training programmes on IPR enforcement for police officials in various states.

This special executive attention on anti-counterfeiting may be appreciated in conjunction with legal provisions as follows:

Indian Penal Code, 1860

Defines counterfeiting (section 28) and makes it an act of cheating, punishable by a fine, imprisonment for up to one year or both (section 417).

Trade Marks Act, 1999

Sections 102-104 deal with the offences of falsifying and falsely applying trademarks, including unregistered trademarks, providing for punishment of up to three years’ imprisonment and a of fine up to ₹200,000 (US$3,000). A civil action can be initiated for infringement of a registered trademark (section 29 read with sections 134 and 135). A civil passing off action can be employed to protect unregistered trademarks (section 27(2) read with sections 134 and 135).

Copyright Act, 1957

Section 63 prescribes penalties of up to three years’ imprisonment and a fine of up to ₹200,000 for infringing or abetting infringement of any copyright. Section 64 empowers police officers to seize all copies of infringing works and plates used in their creation. Section 53 empowers the Commissioner of Customs to treat infringing copies as prohibited goods and detain them. Section 55 provides various remedies for infringement of copyright including injunctions, damages and account of profits.

Customs Act, 1962

The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, enable IP owners to enforce their rights at Indian borders. When the trademark is registered, a notice can be given to the customs authorities for initiating action against importers of counterfeit goods.

Dheeraj Kapoor is an associate at LexOrbis.