ANTI-COUNTERFEITING
ANTI-COUNTERFEITING PRACTICE AT
KHURANA AND KHURANA (K&K)
We specializes in anti-counterfeiting, offering expert legal services across FMCG, Pharmaceuticals, Apparel, and more. Our team excels in criminal actions, trademark enforcement, and securing convictions, ensuring comprehensive protection against counterfeit goods.
Counterfeiting is a significant issue, where unauthorized reproductions of branded goods flood the market, undermining the value and reputation of legitimate brands. The imitation of packaging is often so precise that it becomes difficult to distinguish the essential features of the merchandise from those of genuine products. Counterfeiting, also referred to as the act of copying brands, is a phenomenon that affects every sector, however, some of the most counterfeited industries are fashion and cosmetics. Counterfeiters often copy not only the packaging but also the trademark directly on the clothing. Counterfeits are not limited to luxury products; even toothpaste, shampoo, washing powders, and dishwashing products are counterfeited on a commercial scale. Counterfeiting has increased because consumers buy such products to stay in trend by purchasing from big fashion houses without spending excessively. This is why many in the industry believe that counterfeiting is theft and that those who buy counterfeit products are responsible for fueling criminal activity.
The world of fashion is as competitive as any industry can get. When a design is stolen, the fashion house could lose an entire season because consumers might buy the counterfeited products, either because they are cheaper or due to confusion. Counterfeits result from a violation of intellectual property rights like trademarks or copyrights, with people all over the world buying counterfeit products or “fakes”. To some, the counterfeiting of luxury fashion does not seem like a big deal. They view it as harmless copying that allows people who cannot afford name brands the opportunity to have that status symbol. However, counterfeits are problematic because they can lead to countries not wanting to invest for fear of lacking protection for their products. Counterfeits have a major impact on brands since luxury brands gain their prestige from their reputation and the limited quantity that is available. Counterfeits pollute the supply with similar-looking goods that are of lower quality and not made with the same care.
Laws in India provide a wide array of remedies against counterfeiting under various statutes, though there is no specific law solely addressing counterfeiting. Instead, our legislators have provided statutory, civil, criminal, and administrative remedies through various statutes. Intellectual property (IP) laws play a critical role in combating counterfeiting by providing legal frameworks to protect trademarks, copyrights, and designs. Trademark law helps prevent the unauthorized use of brand names and logos, ensuring that consumers can distinguish genuine products from fakes. Trademark law also necessitates appropriate action against instances of passing off. Copyright law protects the artistic elements of fashion designs and offers remedies against plagiarism, while design law offers protection for new and original patterns and styles. Together, these IP laws empower brands to take legal action against counterfeiters, secure their creative assets, and maintain the integrity of their products in the marketplace. Effective enforcement of these laws not only safeguards the interests of fashion companies but also protects consumers from substandard and potentially harmful counterfeit goods. It is imperative to protect the intellectual property of fashion houses so they have the incentive to create amazing designs without worrying that their creativity and brand image will be exploited by counterfeiters.
Attorneys at Khurana & Khurana have developed significant experience in anti-counterfeiting, particularly in the FMCG, Pharmaceuticals, Apparel, Footwear, and Medical Devices sectors. They can assist in devising comprehensive strategies to curb counterfeit products by outlining all possible risks and assumptions and mapping them with the costs involved in each step, enabling clients to make judicious and objective decisions.
Attorneys at K&K have actively initiated criminal actions and obtained seizure orders from various Indian courts against individuals and businesses involved in manufacturing and distributing counterfeits. K&K is also highly proficient in Trade Mark Registrations and Customs enforcement. Our team has secured criminal convictions for many counterfeiters, made possible by our strong understanding of the procedures involved, experience in handling criminal actions, proficiency in filing suits in the right jurisdictions, and an established network to enforce orders with the assistance of local police authorities. We offer a wide range of anti-counterfeit services, including civil suits, criminal suits, and investigations into alleged counterfeit goods.
CRIMINAL ENFORCEMENT OF IP
Counterfeiting has only grown and become more proliferated with the advancing technology. This menace has deeply penetrated the markets worldwide, leading to availability of copies of items of high end brands, sold in small random street shops or on myriad websites, both lesser known and popular websites. As a criminal wrong, counterfeiting involves infringement of Intellectual Property Rights. Though these rights exist as private rights and are, at most times, enforceable by civil litigation, criminal sanctions can also be issued against their infringement. This is a direct result of the growing instances of counterfeit, passing off and piracy leading to economic damages in huge scores. Statutes such as Trademarks Act, the Copyright Act, and the Geographical Indications Act do provide for criminal remedies. The punishment varies between 6 months and 3 years of imprisonment and a fine ranging from INR 50,000 to 200,000/-. These statutes acknowledge counterfeit as cognizable crime, wherein the police can take action and carry out search and seizure on a court warrant. Khurana & Khurana has considerable experience in providing relief to its Client through Criminal recourse against Counterfeiters, as provided in the following statutes.
CIVIL ENFORCEMENT OF IP
Choosing Civil or Criminal IP Remedies: Effective Strategies
Each IP owner, in cases of infringement, has the liberty to decide for themselves to agitate a criminal or civil proceeding. That being said, interim or permanent injunctions adjudicated in cases of infringing or misrepresenting sale or manufacture, and orders administering preservation of information and/or rendition of an infringer's accounts, are some of the most effective remedies in IP cases. These remedies are often prompt, best suited and long-lasting, whereas criminal remedies may be drawn out and expensive. However criminal responses tend to have a better deterring effect on counterfeiters.
In cases of counterfeit goods, civil remedies that can be prayed for include injunctions, damages and rendition of accounts. The mandate of civil remedy is to stop distribution, manufacturing, and retail of the infringing product. Another important mandate of the aforementioned civil remedies is to forbid an infringer from creating a false impression that the offerings under its intellectual property have an association, nexus or affiliation with the products of the original proprietor of the concerned Intellectual Property.
A civil court is empowered to grant an ex-parte injunction against the counterfeit product. Further, the courts have widened their scope to deal with serious issues of counterfeiting and jurisprudence under this subject is developing quickly as courts are now more likely to grant interim reliefs under civil remedies, if the counsel can effectively demonstrate a prima-facie case. Few of such remedies are:
Anton Pillar Order
which gives right to the right holder to visit the defendant’s premises along with the local commissioner appointed by the court, to search and seize the counterfeit goods. These goods are returned to the defendant with an undertaking that the goods will be safely preserved until further orders of the court.
John Doe Order
It is similar to Anton Pillar order, the only difference here is that the defendants are unknown/ or not known. Moreover, this action is taken when it is difficult to identify the counterfeiter or where the counterfeiter is operating out of temporary premises.
Counterfeiting is a widespread commercial evil rather than a conventional crime. The legislature has also established a commercial court in High Courts, in 2016. These courts have the jurisdiction to try cases of counterfeiting.
BORDER MEASURES
International Counterfeit Prevention
Counterfeiting is a global issue impacting economies. Customs and Border Protection enforces IP rights under Section 11 of the Customs Act by prohibiting and seizing infringing goods. IP proprietors can report grievances for prompt action.
IPR Enforcement Rules 2007
The Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007, were enacted to bolster the Customs Act 1962, enhancing IP protection at borders through strict enforcement against counterfeit imports.
Khurana & Khurana Expertise
Khurana & Khurana excels in obtaining injunctions and favorable IP enforcement orders. We provide comprehensive IP rights protection at Indian borders, complying with the Customs Act 1962 and IPR Enforcement Rules 2007.
Raids are carried out under civil or criminal laws to combat counterfeiting, starting with identifying counterfeit products, collecting evidence, and obtaining client approval for actions.