Counterfeiting challenges for 2010

Anti-counterfeiting strategies seeking to address trademark and copyright violations in India consist of a blend of civil and criminal remedies. Ameet Datta takes a look at the challenges for the coming year.

The remedies in the Trademarks Act 1999 and Copyright Act 1957 have provided a semblance of redress to rights owners, who have been assisted by judicial interpretation of the law and the willingness of the courts to deal innovatively with counterfeiting. Examples of this ‘judicial innovation’, primarily on the civil enforcement side, include:

• Ex parte and interim injunctions, so that defendants do not delay a case by accepting notice in a matter then creating some pretext for delay
   
• Anton Pillar orders or search and seizure orders towards the preservation of evidence
   
• In camera proceedings at the ex parte stage to preserve confidentiality
   
• Lock-breaking powers in civil law suits, providing access to locked premises
   
• Directions to police departments to assist commissions during search and seizure operations, allowing for the safe conduct of the ‘raiding parties’
   
• John Doe orders, allowing for ‘roving search and seizure’ orders against unnamed defendants, initially in relation to television broadcast cases and eventually to be extended to cigarette brands and other cases.

While any suggestion that these innovative ‘tweaks’ to the anti-counterfeiting process have resulted in the attainment of the elusive ‘zero piracy’ goal is debatable, it is fair to suggest that rights owners have been strengthened in their efforts against piracy and are able to conduct relatively effective anti-piracy campaigns.

While the courts continued to exercise a fair degree of judicial examination of the law in routine infringement actions, in cases of counterfeiting, they were liberal with ex parte injunctions as well as jurisdictional principles to allow for action against pirates.