Injunctions against sale, manufacture and misrepresentation and orders directing rendition of the infringer’s accounts and preservation of information are most effective when accompanied with enforcement of a favourable court order. Right owners have the option to choose between civil suits and criminal proceedings, whichever is strategically better suited to a set of facts or circumstances. Civil remedies are swift, effective and lasting in effect. Criminal remedies take relatively longer and generally have nil returns in damages or costs but can have a chilling effect on the counterfeit trade.
Civil remedies against counterfeiting mostly include injunctions, damages and/or rendition of accounts. The mandate of civil remedy is to stop distribution, manufacturing, or retailing of the infringing product or gaining profits from using the pirated/counterfeit products. Another important aspect of the aforementioned civil remedies is to forbid an infringer from creating a false impression that the offerings under its intellectual property have some kind of association, nexus or affiliation with the products of the original proprietor of the said intellectual property.
A civil court may even grant ex-parte injunction while the proceedings are on. Further, the courts have widened their scope in order to deal with a serious issues of counterfeiting and the jurisprudence under this subject is growing as the courts have introduced various interim reliefs under civil remedies through various judgments. 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.
Code of Civil Procedure 1908 governs the procedures adopted in the civil cases. Counterfeiting is a widespread commercial crime rather than a conventional one. The CPC has also established a commercial court in High Court, in 2016, which has the jurisdiction to deal with cases relating to ‘counterfeiting’.
The first line of defence against the cross-border movement of counterfeited/ pirated articles are the National Customs and Border Protection. The Customs Act regulates the import and export of goods through provisions provided under Section 44-51. Further, Sec 11 strengthens the IP enforcement as it empowers the government to enforce prohibition on the import and export of certain goods to protect Patents, Trade Marks and Copyrights and gives power to the custom officials to confiscate goods imported or exported, unlawfully or illegally.
The Government of India had notified the ‘Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007’ with a view to bolster the Customs Act and provide remedies to protect IPRs at borders. Thus, importing of infringing goods is prohibited under the Customs Act 1962, read with the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007.
The law allows holders of specific IP rights such as trademarks, copyright, patents, designs and geographical indications to record their grievances with Customs officials for prompt seizure of counterfeit goods at the port itself.
Khurana & Khurana is experienced in getting civil remedies for its clients such as Injunctions against Counterfeiters and getting favorable enforcement orders in relation to IPs. We also provide protection of IP rights and IP enforcement at Borders of the Indian territories in compliance with Customs Act 1962, read with the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007.