LEGAL WRITING
I would like to take this opportunity to thank the people responsible for
me receiving this outstanding and engaging assignment on Judicial
Activism. I would like to thank Dr.ShifaliRaizada (head of institution),
Mr. Alok Verma (guide), Dr.Bhawna Batra (Mentor),Dr. Vijendar Singh
and the library staff .
Sign-
Date-
Faculty In charge- Mr. Alok Verma
Institution-Amity Law school, Noida
Contents
1. Abstract
2. Introduction
3. History of Counterfeiting
6. Counterfeiting in India
10. Conclusion
11. Bibliography
Abstract
A recent survey from the US has come out with the finding
that worldwide 10 per cent of perfumes and cosmetics, 11
per cent of clothing and footwear and around six per cent
of drugs bought by consumers are fakes. The figure rises to
a staggering 80 per cent in some developing countries.
According to the International Anti-Counterfeiting
Coalition, in the US alone trademark counterfeiting robs
the country of $200 billion (Rs 9, 20,000 crore) annually.
The Anti-Counterfeiting Group (ACG), organiser of a pan-
European survey, put the total loss to the European Union
economy from counterfeiting and piracy at £250 billion (Rs.
20, 00,000 crore) per year; of this £30 billion is lost in
taxes and excise. Polo Ralph Lauren, Gap, Banana
Republic, American Eagle, Abercrombie and Fitch, Guess,
J.Crew, Nautica Timberland are brands which most prone
to counterfeiting. Another estimate says 4,100 jobs are lost
each year in the UK alone because of counterfeiting -
wrecking industries and draining funds which otherwise
would have reached public services,
Counterfeiting in Asia
INDRP
Criminal prosecution
Criminal remedies are provided under the Trademarks Act,
the Copyright Act, the Geographical Indications Act and the
IT Act. Offences under the Trademarks Act, Copyright Act
and Geographical Indications Act are punishable by six
months’ to three years’ imprisonment and a Rs50,000 to
Rs200,000 ($765 to $3,060) fine. However, the court may
reduce these penalties in recognition of special
circumstances. Provision is made for increased minimum
penalties on second or subsequent commission of an
offence. The Code of Criminal Procedure 1973 governs the
procedure applicable to criminal cases. Pursuant to the
extension of the proceeds-of-crime law to IP matters, assets
of entities undertaking transactions while falsely using
another party’s intellectual property may be seized by the
authorities along with arrest.
Anti-counterfeiting online
The e-commerce boom in India has resulted in an explosion
of online retailers selling counterfeit goods which are
portrayed as original but with heavy discounts. E-
businesses are relatively easy to start, which helps illegal
operators to flourish. Most such enterprises do not put the
manufacturer’s or importer’s name on the product, making
it easy to deny its sale in case of action. Crucially, these
businesses operate as foreign incorporated companies
which do not name any individuals, making enforcement
even more challenging.
Online strategies
Tackling online counterfeiting requires a sophisticated
investigation strategy. Investigation of online counterfeiting
requires a combination of online surveillance using high-
tech tools and personal visits and physical analysis of the
products.
Online business networks comprise a chain of stakeholders
and rights holders must identify the most effective targets
along the chain, including importers, website owners,
domain hosts, Internet service providers (ISPs) and
payment gateways.
Intermediary liability
The IT Act provides for liability of internet intermediaries.
The definition of an ‘intermediary’ includes ISPs, hosts,
search engines, online payment sites, online auction sites,
online marketplaces and even cyber-cafes.
Intermediary liability is limited by certain exemptions
established through compliance with due diligence
requirements, including notice and takedown.
The Supreme Court has analysed the provisions for notice
and takedown and ruled that any notice to an intermediary
to take down any content must be pursuant to a court
order. Therefore, a rights holder seeking to take down
online counterfeiting must approach the competent court,
name the intermediary as defendant and seek specific
directions against it.
Indian courts have also been proactive in granting John
Doe orders against ISPs and hosts to block access to
websites providing downloads of pirated movies before their
official release.
Preventive measures/strategies
Use of local counsel and investigators
To a large extent, the effectiveness of an anti-counterfeiting
action can depend on the prior investigation. However,
rights holders often make the mistake of relying solely on
the investigators for both the investigation and the
following legal action, without even consulting lawyers.
While the initial role of the investigator is crucial for proper
target identification, legal action should always be initiated
with the involvement of local lawyers specialised in IP
litigation. This is important to ensure the best conclusion
of the proceedings, since an investigator’s interest usually
ends once a raid is conducted, while the case before the
courts continues and may result in adverse orders against
the rights holder if not properly pursued.
Effective use of anti-counterfeiting features
The use of preventative technology (eg, radio frequency
identification, microscopic tags, barcoding, licence
databases, unique identity codes or holograms and seals of
authenticity) can prevent the proliferation of counterfeit
and pirated products. With the increasing sophistication of
counterfeiting, use of multiple features is recommended;
this also helps in establishing infringement before courts
and authorities, since most counterfeits still fail to comply
with all the features.
Third-party monitoring
Most goods go through a series of third-party
intermediaries in their supply chain. Pilferage during one
or more such levels in the supply chain is seen as a major
concern, especially in the case of counterfeit packaging.
Therefore, in addition to strict non-disclosure and
confidentiality agreements, periodic internal checks and
surveillance must be in place.
The Supreme Court has taken the lead and in the case of
Laxmikant Patel vs Chetanbhat1 Shah held that "once a
case of passing-off has been made out, the practice is
generally to grant a prompt ex-parte injunction followed by
the appointment of a local commissioner, if necessary".
And also authorizing the Court Receiver to seize the goods
whether they are lying at the defendant's factories or at the
premises of their retailers. These are known as roving
orders. The Court Receiver is often authorised to take the
help of the police in conducting the raids. also in case of
Microsoft Corporation Vs.Mr. Kiran and Anr.2
1
AIR 2002 SC 275, 2002 (1) ALD 45 (SC)
2
MIPR 2007 (3) 214, 2007 (35) PTC 748 (del)
The punishment for counterfeiting should be both
compensatory and punitive. compensatory to provide for
the damages and punitive to deter wrong-doers , to
emphasis that breach of intellectual property rights was a
wrong not only to the plaintiff, but also society at large and
the consumers who suffer on account of that deception and
to underscore that it is difficult for the plaintiff to prove the
actual damages suffered by him considering that infringers
do not maintain appropriate accounts of their transactions
as they know that the same are objectionable and
unlawful.
4
FSR (2003) 407
annual loss of revenue to the Indian companies in excess of
Rs 4,000 crore.
Conclusion
1. Wikipedia.com
2. Iccwbo.org
3. nationalgeographic.org
4. SSConline.com
5. Indiankanoon.com
6. NCERT.nic.in
7.OCED-library.org
8.britanica.com