Criminal remedies are very effective and create the strongest deterrence in the market but are often less opted for as proposed remedies to combat piracy. A brief snapshot of the criminal remedies is as under:
TRADE MARKS ACT, 1999
The punishment for falsifying and falsely applying trademarks are contained in section 103 and 104 of the Act. An offence under the Trademarks Act is cognizable and non-bailable. An offence concerning infringement of Trademark is punishable with an imprisonment of not less then 6 months but which may extend to three years. The minimum fine under the Act is INR 50,000/- extendable to INR 2,00,000/-.
The options for carrying our criminal prosecutions under the Trade Marks Act, 1999 are as follows:
- Complaint before Magistrate:
In order to initiate prosecution under the Penal provisions of the Trade Marks Act, the right holder may file a direct complaint before the Police or file a complaint before the Magistrate seeking orders for investigations under section 156 (3) Cr. P.C. and may also move an application under section 93/94 of the Cr.P.C. for issuance of General Search Warrants for affecting general search and seizure.
- Direct Complaint before the Police:
The procedure for filing a direct complaint before the Police for infringement of Trade Marks is contained in section 115 (4) of the Act. The minimum level Police Officer empowered under the Act is Deputy Superintendent of Police (DSP)/ Assistant Commissioner of Police (ACP). The concerned DSP/ACP is required to then seek an opinion from the Registrar of Trademark and can only then initiate an action.
COPYRIGHT ACT, 1957
The Penal Provisions under the Copyright Act, 1957 are contained in Chapter XIII of the Act. The punishment for infringing Copyright is contained under section 63, 65 of the Act and the powers of the Police are contained under section 64 (1) of the Act. An offence under the Copyright Act is cognizable and non-bailable. An offence concerning infringement of Copyright is punishable with an imprisonment of not less than 6 months but which may extend to three years. The minimum fine under the Act is INR 50,000/- extendable to INR 2,00,000/-.
Unlike Trade Marks, the procedure for carrying out prosecutions under the Copyright Act are relatively simpler, especially when it comes to the filing of a direct complaint before the Police.
- Direct Complaint before the Police:
Under Section 64(1) of the Copyright Act, 1957, any police officer, not below the rank of Sub-inspector has the power to seize without warrant, infringing copies of a work, plates etc.
- Complaint before the Magistrate:
Like Trade Marks Act, 1999, even under the Copyright Act, 1957, a complaint can be filed before the Magistrate alleging offences and seeking orders for investigations under section 156 (3) Cr.P.C. along with application for General Search and seizure under sections 93/94 Cr.P.C.
The lack of exit options under criminal prosecution/criminal remedies was one of the main reasons for brand owners to not opt for the same. However, the scenario has completely changed and the courts are increasingly becoming pro-settlement in criminal matters, which can be settled in the following manner:
- Quashing/ Writ Petition:
Since an offence under Trade Marks/ Copyright is non-compoundable, the same cannot be settled by moving an application for compounding (under section 320 Cr. P.C.).
However, the FIR can be quashed by the High Court of the concerned jurisdiction under section 482 of Cr.P.C. on the basis of settlement arrived at between the parties.
- Plea Bargaining:
Plea bargaining is provided for under section 265 Cr.P.C. Plea Bargaining is an option which is available once the charge sheet is filed by the Police. The accused has to move an application under section 265 Cr.P.C. Thereafter a notice is issued to the complainant. If the complainant is agreeable for a settlement then an MSD (Mutually Satisfactory Disposition) deed is signed. Apropos signing of the same, the accused is convicted, but the conviction is normally without sentence.