What to do when your Intellectual Property is infringed in India?

Cease & Desist Letter

In cases of counterfeiting (the unauthorized imitation of a branded product) and/or piracy (the unauthorized copying of a product protected by intellectual property rights), the first option the injured party has is to send a Cease & Desist letter requesting the infringing acts to cease and desist. The purpose of this letter is to resolve the dispute quickly and without litigation. Moreover, it is a very cost-effective means of enforcing IP law before taking legal action. It is recommended that this letter be sent by a lawyer to show that the company is considering legal action. If the cease & desist letter does not work, the injured party can always decide to go to court. Indian IP law provides for both civil and criminal proceedings for this:

Civil proceedings for IP infringement

The purpose of civil proceedings is to stop the distribution, production or sale of the infringing product. It is possible to choose to file a claim for damages or to gain insight into the accounts of the infringing party. If insight into the accounts is chosen, the infringing party must hand over the profits they made with the illegal activities to the injured party. In a claim for damages, the judge determines an amount to be paid by the infringing party.

During ongoing civil proceedings, the judge can even issue injunctions that are intended to prevent an imminent infringement of IP rights. The judge can impose an ad interim injunction on the opposing party. This is a prohibition on any action with the product of the injured party until the dispute is resolved. The injured party must be able to demonstrate that if the temporary injunction is not granted, it will lead to irreparable losses. The Mareva injunction also protects the interests of the injured party during the legal proceedings and is granted to prevent the opposing party from selling its products or services until the process ends.

Furthermore, an Anton Pillar Order allows a company to go to the premises of the opposing party with a court-appointed commissioner to search and seize the relevant documents and counterfeit goods. This may be done to prevent the removal or destruction of evidence for the case. If the infringing party is unknown (for example, an e-commerce company), a John Doe order may still be used. This gives the plaintiffs the freedom to raid premises where infringement activities are suspected, with the help of a court-appointed commissioner.

Criminal proceedings for IP infringement

In India, IP rights are private rights that are enforceable through civil proceedings. However, the Trademark Act, Copyright Act and Geographical Indications Act also provide for criminal remedies. The penalties can range from 6 months to 3 years in prison and a fine of Rs 50,000 to Rs 200,000 (Rs 550 to Rs 2,250). Under these laws, the suspects are liable to prosecution and the police can raid and seize the goods without a court order. Due to the lengthy criminal investigations, there is a large backlog in the completion of these cases. In order to circumvent these years-long procedures, the courts have created a plea bargaining option. In this case, the infringing party accepts its guilt in exchange for a pardon of the prison sentence and compensation for the damages suffered by the injured party.

Always seek legal advice first

It is important to always seek legal advice first if you suspect that someone is infringing your intellectual property rights. Making threatening demands without evidence is illegal. An intellectual property lawyer can help you determine whether the infringement of your property rights is a criminal offence and where to report it. If you choose to also file a civil lawsuit, a local IP attorney can help you file and build a strong case.