Search and seizure guidelines assist in battle against IP piracy

Piracy is perhaps the most rampant issue that intellectual property (IP) rights holders struggle to cope with. It demands a strict enforcement mechanism. While search and seizure orders have a crucial role to play in enforcement, courts have commented on the appointment of local commissioners to carry out search and seizure operations.

The Anton Piller provides the right to search premises and seize goods without prior warning, and aims to prevent the destruction of incriminating evidence, particularly in cases involving intellectual property.

The order derives its name from the 1976 English case of Anton Piller v Manufacturing Processes Limited, and requires that:

1. an extremely strong prima facie case be established against the respondent;
2. the damage, potential or actual, must be very serious for the applicant; and
3. there must be clear evidence that the respondents have in their possession incriminating documents or things, and that there is a real possibility that they may destroy such material before an inter partes application can be made.

Statutory recognition

Indian law gives statutory recognition to such orders in section 135 of the Trade Marks Act, 1999. The provision states the following:

135. Relief in suits for infringement or for passing off:

(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up the infringing labels and marks for destruction or erasure.

(2) The order of injunction under subsection (1) may include an ex parte injunction or any interlocutory order for any of the following matters, namely:-

a. for discovery of documents;

b. preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;

c. restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

While Anton Piller orders are similar to ex parte interlocutory orders, after a hearing in camera, the court authorizes the plaintiff to inspect premises and take an inventory of the offending material.

Commenting that the element of surprise can be crucial to an infringement action, courts have stated that the issuance of a notice can result in the effacement of incriminating evidence, thus presenting a question of preserving, rather than collecting, evidence.

The Autodesk case

Revisiting the comments on Anton Piller orders and the establishment of prima facie cases to obtain them, the Delhi High Court in the case of Autodesk Inc and Another v AVT Shankardass and Another also set out guidelines for the appointment of local commissioners.

The case, dealing with computer and software piracy, was initially found by a single judge at first instance to be unfit for an Anton Piller order, however this stance was reversed by the division bench.

Additionally, taking into consideration certain recommendations made by the parties to the suit, the division bench enumerated the following factors and guidelines applicable to the appointment of a local commissioner in infringement and piracy matters.

i. The object of the appointment of a local commissioner in piracy matters is not so much to collect evidence as to preserve and protect infringing evidence. Pirated software or incriminating evidence can often only be obtained from the premises of the opposite party, and in the absence of an ex parte appointment of a local commissioner, it is likely that such evidence may be lost, removed or destroyed.

ii. To request the ex parte appointment of a local commissioner in such matters is usual, and is intended to serve the ends of justice as it is imperative to have an element of surprise so that the actual position is not altered.

iii. At the initial stage, the test of reasonable and credible information regarding the existence of pirated software or incriminating evidence should not be subject to strict proof or the requirement to demonstrate or produce part of the pirated software or incriminating evidence. It has to be tested on the touchstone of pragmatism and the natural and normal course of conduct and practice in trade.

iv. t may not always be possible for a plaintiff to obtain any admission by employing decoy customers and gaining access to the defendant’s premises. Any such attempt also runs the risk that the decoy customers may be exposed and the pirated software or other incriminating evidence destroyed. Accordingly, a visit by a decoy customer or investigator is not to be insisted upon. However, any information provided by a private investigator should be objectively evaluated.

v. In cases where certain and definite information with regard to the existence of pirated goods or incriminating evidence is not available, or where the court may nurture some element of doubt, it may consider asking the plaintiff to deposit costs in court. If no pirated goods or incriminating evidence is found, the defendant can be suitably compensated for the intrusion that has occurred into his work or privacy.

Anton Piller-type orders and guidelines are gaining increasing prominence as enforcement measures in India. The presence of such guidelines helps afford security and relief to IP owners against the threat of misappropriation and disparagement of their goods and brands.

Manisha Singh Nair is a partner at Lex Orbis, an intellectual property practice law firm headquartered in New Delhi.