Civil Enforcement

Injunctions

An injunction is a court order that restrains a person from committing an act of infringement or compels them to do a specific act. It can be:

Temporary (interim) injunction: Granted during the pendency of the case.
Permanent injunction: Granted as final relief after the case is decided.

Example 1. A book publisher obtains an injunction preventing the reproduction of its copyrighted material by a third party.

Answer:

The court issues a temporary injunction until the final decision is made to prevent further damage.

Damages

Damages refer to the monetary compensation awarded to the plaintiff for the losses suffered due to infringement. The court assesses actual losses and may also consider loss of reputation or business.

Example 2. A company sues another for unauthorized use of its patented process and seeks damages.

Answer:

The court evaluates the loss in business due to the infringement and awards compensatory damages.

Account of Profits

Account of profits is an equitable remedy where the infringer is directed to hand over profits earned through the infringement to the rightful IP holder. It is an alternative to damages and not awarded simultaneously.

Example 3. An infringer sold pirated DVDs and made ₹5 lakhs in profits.

Answer:

The court may order the infringer to account for and pay these profits to the copyright holder.

Delivery Up of Infringing Goods

This remedy allows the court to order the delivery or surrender of all infringing goods, equipment, or materials to the rightful owner or for destruction, to prevent future misuse.

Example 4. A fashion brand wins a case and seeks destruction of counterfeit clothing bearing its trademark.

Answer:

The court may order delivery up of all infringing goods for destruction or disposal.

Anton Piller Orders and Mareva Injunctions

Anton Piller Orders are search and seizure orders that allow the plaintiff to enter the defendant's premises to secure evidence of infringement without prior notice, preventing destruction or tampering.

Mareva Injunctions are freezing orders that prevent the defendant from disposing of assets to defeat the enforcement of a potential judgment.

Example 5. A software company suspects a vendor of storing pirated copies and applies for an Anton Piller order.

Answer:

The court may grant the order, allowing the company to secure evidence before it's destroyed.

Criminal Enforcement

Penalties for IP Infringement

Imprisonment and Fines under various IP statutes

Criminal remedies act as a deterrent against willful and commercial-scale infringement of intellectual property rights. Different IP laws in India prescribe penalties that may include imprisonment, fines, or both.

Copyright Act, 1957 (Section 63): Imprisonment of 6 months to 3 years and fine between ₹50,000 to ₹2 lakhs for copyright infringement.
Trademarks Act, 1999 (Section 103): Imprisonment of 6 months to 3 years and fine up to ₹2 lakhs for falsifying or falsely applying a trademark.
Designs Act, 2000: Primarily provides civil remedies; however, criminal action may be invoked in cases involving fraud or counterfeiting under other statutes.

Example 1. A person is caught distributing pirated movie DVDs on a large scale.

Answer:

The person may be prosecuted under the Copyright Act, and if found guilty, may face up to 3 years of imprisonment and a fine up to ₹2 lakhs.

Powers of Police

Search and Seizure of infringing goods

Indian IP laws empower the police to take proactive measures against IP infringement, often without prior permission from the court in certain cases.

Copyright Act, 1957 (Section 64): Allows police officers (not below the rank of sub-inspector) to seize infringing copies without warrant if they believe an offense has been committed.
Trademarks Act, 1999: Authorizes police to seize counterfeit goods bearing false trademarks with the court’s permission.

Example 2. A raid is conducted at a market selling fake branded shoes using a police seizure order.

Answer:

The police may seize all infringing goods and initiate criminal proceedings against the offenders for trademark falsification.

Border Measures

Customs Act, 1962 and IP Enforcement

Power to prohibit import of infringing goods

The Customs Act, 1962 empowers Indian Customs to take action against the importation of goods that infringe intellectual property rights. Section 11 of the Act authorizes the Central Government to prohibit the import of goods that violate legal provisions, including IP laws.

To implement this, the Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007 were introduced. These rules allow right holders to register their IP rights with Customs to restrict the entry of counterfeit and pirated goods at the border.

Right holders must record their IP with the Customs authority through the ICEGATE portal.
Customs can seize infringing goods at ports, airports, or land borders.

Example: A shipment of fake branded mobile accessories arrives at an Indian port.

Answer:

If the brand owner has registered their IP with Indian Customs, the shipment can be seized and destroyed, and legal action may be initiated against the importer.

Role of Customs Authorities

Customs authorities play a vital role in enforcing IP rights at the border by:

Monitoring and inspecting imported goods for potential IP violations.
Detaining and examining suspicious consignments upon information or suo motu.
Notifying the IP right holder upon detection of suspected goods.
Facilitating legal proceedings and destruction of infringing goods after due process.

This mechanism helps prevent the entry of counterfeit and pirated products into the Indian market, supporting brand owners and upholding consumer safety.