According to Black’s Law Dictionary, counterfeiting is the manufacturing and distribution of a product that is not original but retains the genuine original trademark with the intention of misleading consumers.
Today, counterfeiting is a major issue worldwide. Fake products are frequently found in anything from face powder to food items, bogus websites to social media identities, pain relievers to vaccines. Counterfeiting is dangerous since it is done with the aim to defraud, and its elimination is urgently required. Because of the issue’s serious effects, individuals are already beginning to have second thoughts about trusting medications.
Counterfeiting in India
The term “counterfeiting” is not defined under the Trademarks Act of 1999. However, the definition can be derived from a variety of dictionaries and the extensive body of information regarding its application. It can be described simply as a copy of what we might consider authentic.
• The Trademarks Act, 1999.
This is the principal legislation that governs trademarks in India. It provides civil and criminal remedies to infringement of a registered trademark. Unregistered trademark owner’s rights are recognised and protected concerning taking action against a registered trademark if the latter is the prior user.
• The Copyright Act, 1957.
As the name suggests, copyright is a property right given to the original and authentic work and the person who publishes such work is given copyright to perform, adapt, develop, perform, and display their original work. The act provides both statutory civil and criminal remedies against copyright infringement if any. The initiation action for such infringement does not require any registration.
• The Designs Act, 2000.
A design is an umbrella term used to describe different features of a product. Shape, ornament, configuration, pattern or composition of lines or 2-D, 3-D colours, manufactured by the means of the industrial process are the different features that constitute the word Design. Under this act, the remedies are only civil.
• The Geographical Indication of Goods (Registration and Protection) Act, 1999.
An indication attached to goods related to geographical origin or manufactured good is dealt under the above act. The goods that come under the act are either agricultural, manufactured, or natural goods come under this act.
• Counterfeiting in cyberspace
Cyberspace is the most convenient space for counterfeiting the reason being its easy accessibility and approachability and anyone irrespective of identity being fake or real can have access to this space making it the most challenging task to curb counterfeiting in this platform.
• The Information Technology (Intermediary Guidelines) Rules, 2011.
These guidelines are laid down to impose a duty on intermediaries concerning conducting due diligence over any content users post by providing adequate information regarding the restrictions under these guidelines. Clear guidelines are mentioned as an attempt to inform users about what to and what not to display, host, publish, modify, update, share or transmit information that might infringe any patent, copyright, trademark or any proprietary right.
• Enforcement through customs
The rights may be registered with Indian Customs under the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 read by the Customs Act, to prevent the importation of infringing content into India. After that registration, the Commissioner of Customs may seize the consignment of the infringing material at the customs port and commence proceedings against the importer if it is satisfied that the material being imported will infringe the Registrant’s IP rights. The final order may require the utter confiscation of the offending goods, along with the importer’s penalties, which could amount to twice the value of the goods purchased.
Legal remedies available
Through the customs authority of India, the affected parties may enforce their intellectual property rights against an infringer by either criminal or civil action or enforcement.
1. Civil Remedies:
Civil remedies for intellectual property rights infringement are governed by the Code of Civil Procedure, 1908. With the primary purpose of resolving commercial disputes quickly and effectively, the Commercial Courts Act, 2015 was passed. As forums for redress, district-level commercial tribunals and High Courts with original jurisdiction were established. The Commercial Courts Act governs all matters involving intellectual property.
In order to avoid the need for oral testimony, the notion of summary judgments was developed. If the court is persuaded that the opposing party has little prospect of winning the case, the summary judgement will be granted. Anti-counterfeiting actions are a good fit for situations where summary judgments are used since they shorten the
length of a lawsuit and give the wronged parties the right kind of relief.
Reliefs that can be granted:
• Ex parte interim injunction that is temporary:
If the courts believe that a delay in providing an injunction may result in an irreparable loss of reputation and profit to the rightful owner, they may grant the defendant temporary or interim jurisdiction without giving them prior notice.
• Order of Anton Piller:
A local commissioner may be appointed by the court to confiscate or inventory goods that are being used in violation.
• Order of John Doe:
In accordance with the court’s ruling, the local commissioner may enter the properties of an unnamed defendant if there is a reasonable basis to suspect that there is infringing material on or near those properties.
• Profit and expense records:
In an effort to determine the scope of the infringing activity and determine damages, the court may take the defendant’s financial records and profits.
• Injunction with standing:
In an effort to prevent him/her from producing or dealing with the infringing material, the court may grant a permanent injunction.
• Actual costs and damages:
After determining the degree of the infringement, the court may order the defendant to pay damages to the owner of the intellectual property rights, keeping the interests of justice and litigation costs in mind.
2. Criminal remedies:
Only matters covered by the Trademarks Act of 1999, Information Technology Act of 1999, Protection of Plant Varieties and Farmers’ Rights Act of 2001, Copyright Act of 1957, and Geographical Indication of Goods (Registration and Protection) Act of 1999 are subject to criminal remedies. By filing a FIR or a complaint with the magistrate, criminal action can be started against the infringing party. If the offence is cognizable, the police have the authority to search, seize property, and arrest the perpetrator. According to the relevant statute, the offender faces a sentence of either imprisonment for the designated period of time, a fine, or both.
Although counterfeiting cannot be effectively eliminated, knowledge of how simple it is to track down offenders with the right tools and the consequences that follow may instil some level of dread in at least some, if not all, offenders. As the adage goes, prevention is always preferable to treatment, so every effort should be taken to entirely eradicate counterfeiting rather than devising measures that foreshadow potential consequences of the offense after it has been committed. People on the receiving end may have suffered significant psychological and mental harm as a result of the deceit being committed.
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