Posts in IPR

Copyright violation can land you in jail – Knit pro international vs State of NCT Delhi

Issue – Can FIR be registered u/s 63 of Copyright act?

What is the nature of offence u/s 63 Copyright act 1957?

Held – Offence u/s 63 copyright act 1957 is cognizable and non bailable. Police can register FIR under this provision.

In 2022 itself, the Hon’ble Supreme Court of India, in M/s Knit Pro International v. The State of NCT of Delhi, has observed that offences under Section 63 of the Copyright Act, 1957 (“Copyright Act”) are cognizable and non–bailable.

Factual Matrix

M/s Knit Pro International (“Knit Pro”) had filed an application under Section 156(3) of the Code of Criminal Procedure, 1973 (“CrPC”) seeking directions from the Chief Metropolitan Magistrate (“CMM”) for “registration of FIR against” Respondent No. 2 (“accused”) for offences relating to Sections 51, 63 and 64 of the Copyright Act along with Section 420 of the Indian Penal Code, 1860 (“IPC”). The application was allowed by the CMM by way of an order dated 23rd October 2018 and thus an FIR was registered.
Consequently, the accused filed a Writ Petition before the Delhi High Court (“High Court”), praying for quashing of the criminal proceedings. During the hearing of the case, the accused argued that “the offence under Section 63 of the Copyright Act is not a cognizable and a non-bailable offence” and thus prayed for quashing of the criminal proceedings on that ground alone.
Vide the impugned judgement, the High Court allowed the petition by observing “that the offence under Section 63 of the Copyright Act is a non-cognizable offence.” Aggrieved, Knit Pro approached the Supreme Court in the present proceedings.

The infringement of intellectual property rights is one of the biggest problems of modern days.

India is under obligation under the TRIPS AGREEMENT hence the recent judgment of the Hon’ble Supreme Court furtehr strengthens the legal framework of the Copyright Act and CrPC.

In re-opening economy- What should business owners do to fight counterfeits/Fakes?

What Should Your Business should Do to fight counterfeit goods?

With the current reopening economy Countries are gradually opening the industries and borders.
The covid-19 has completely transformed our life, work style and shopping habits. Now more consumers are staying home so there has been a major shift to e-commerce. Although it is impossible to predict the long-term effect of covid-19 on retail industry. With the rise of e-commerce there are new threats as this time is being used as an opportunity by fraudsters.

The COVID-19 pandemic is wreaking havoc across all industries for essential/ non-essential products, thereby creating opportunities for counterfeiters who are taking advantage of the massive shift to panic buying among consumers worldwide.

Change in buying patterns
Right now the production is almost nill hence there are great chances that the market may be flooded with counterfeit goods and customers end up buying fake products. The current situation has caused, consumers to purchase goods both essential and non-essential in bulk without doing their due diligence. This change in purchase pattern will rise to counterfeiting due to high profits based on increased prices and bulk purchases by consumers of low quality goods.

It may be due to:
• counterfeiters directly manipulate the market through online stores, groups etc.
• companies aren’t able to complete due diligence process;

What should you do to fight counterfeit goods?
As per the current market trend the counterfeit products and services will continue to grow resulting into decreased market share for legitimate brand owners and hurting their brand image. The bugger problem is the harm to the consumer due to low quality/sub standard goods.

Every brand has to take measures to combat fakes and to protect its brand in the market.

The following strategies might help:.
Brand Protection and Anti-Counterfeiting Strategies:
Conduct an internal audit for a standard operating procedure for brand security- This assessment will help the companies to determine how their brands and products are protected in terms of legal security. Pay good attention to the distribution network.
Key intellectual property rights registry– Ensure that all intellectual property rights are registered and corrected in countries where the products are designed, produced, assembled and marketed. Until and unles the intellectual property is registered, companies cannot enforce removal of a fraudulent listing.

Routine monitoring of unauthorized use of your brands.
1. Online surveillance– Internet searches for proof of infringing activity are important. The de-listing or deleting infringing listings or domains in full and on a regular basis is necessary.
2. Physical surveillance– Companies should monitor major retailers and purchase store and legitimate sites to determine whether customer orders are being fulfilled with authentic products and also, monitoring products that are returned shall also help to identify the source in case of fakes.

Targeted enforcement.
1. Identify the market place where the fake goods are being sold.
2. Send cease and desist demands to infringers. If letters to cease and desist do not rectify the issue, and when particular counterfeiting activities are detected, different levels of enforcement should be considered.
3. Keep your consumers updated. Train & Educate your consumers so as to how to know if a product is fake or not.

Quick and effective communication can build brand loyalty.
To control the issue of counterfeiting amid COVID-19, companies need to have smarter enforcement, greater communication and exchange of knowledge. The ongoing battle against counterfeiters needs a 360 degree cooperation of manufacturers, IPR holders and brand owners, e-commerce sites, search engines and consumers.

Our legal system is already strong and diligent enough to enforce Intellectual property rights.

Similar words may be registered as Trademarks

The supreme court in NANDHINI DELUXE V/S KARNATAKA CO-OPERATIVE MILK PRODUCERS FEDERATION LTD has held that wherein the Respondent was dealing with business of milk product and the Respondent applied for trade mark Nandini and got same registered in its favour. The trademark was opposed on ground that it is deceptively similar to the mark of respondent. The apex court held that not only visual appearance of the two marks is different, they even relate to different products, manner in which they are traded by the appellant and respondent respectively, it is difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of respondent.

The dispute pertains to the use of mark ‘NANDHINI’. The respondent herein, which is a Cooperative Federation of the Milk Producers of Karnataka, adopted the aforesaid mark ‘NANDINI’ in the year 1985 and under this brand name it has been producing and selling milk and milk products. It has got registration of this mark as well under Class 29 and Class 30. The appellant herein, on the other hand, is in the business of running restaurants and it adopted the mark ‘NANDHINI’ for its restaurants in the year 1989 and applied for registration of the said mark in respect of various foodstuff items sold by it in its restaurants. The respondent had opposed the registration and the objections of the respondent were dismissed by the Deputy Registrar of the Trade Mark.

The Hon’ble apex court has observed that the nature and style of the business of the appellant and the respondent are altogether different. Whereas respondent is a Cooperative Federation of Milk Producers of Karnataka and is producing and selling milk and milk products under the mark ‘NANDINI’, the business of the appellant is that of running restaurants and the registration of mark ‘NANDHINI’ as sought by the appellant is in respect of various foodstuffs sold by it in its restaurants.
Since not only visual appearance of the two marks is different, they even relate to different products. Further, the manner in which they are traded by the appellant and respondent respectively, highlighted above, hence it is difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent.