IP Litigation Strategy: When to use criminal remedies?

Most of the IP infringement cases are settled out of court with the use of various alternate dispute resolution mechanisms, because in majority of the cases the infringer either agrees to license the IP or pay royalty, either way a settlement is reached sooner or later. However, there may be instances where the parties are not able to reach a settlement.

In such situations, as an IP attorney, in order to get the best relief for your client, what your first step ought to be is to analyse whether to proceed with civil remedies, such as filing suit for injunction, damages, accounts for profit, or proceed with criminal remedies, such as police complaints followed by raids, search and seizure of infringed goods.

Litigation in intellectual property cases in more of a strategy than need. The pros and cons of taking any IP matter to the Court must be weighed before proceeding directly with litigation. Although IP infringement cases generally lead to a settlement between the parties. But there may be instances where the parties are not able to reach a settlement. This post will expound upon the circumstances when a going for a criminal remedy is suitable, and the considerations to be kept in mind for weighing the pros and cons.

It is to be noted that in India criminal remedies are provided in Trade marks, Copyrights, Geographical Indications, IC Layout Designs, and Plant Varieties law. However, litigation in IC Layout Design and Plant Varieties law is almost non-existent.

Criminal remedy in IP infringement cases would be more effective than civil remedies when the objective of your litigation strategy is to create a wide spread market sweep and impact (i.e. seize goods) A criminal remedy in IP infringement case would be best if the cause of action is widespread (i.e. searching a lot of premises is required). Another plus point of criminal remedies is that it strikes general deterrence even when directed against a particular individual. Also, criminal remedies cause social condemnation and embarrassment of the accused (when he is arrested or his premises seized).

The following considerations should be kept in mind while opting for criminal remedies –

  • It is often difficult to persuade the police authorities for registering an FIR and raiding the premises of the accused – since police personnel at the ground level are least aware about intellectual property, and in their opinion they have much bigger problems (like complaints against rape, murder, etc.) than to go after a person who, lets say, has photocopied your book!
  • In case the police authorities refuse to register an FIR or even a complaint, an alternative recourse would be to file a complaint directly with the Judicial Magistrate. In practice, this is what IP attorney’s suggest clients for the sole reason that a Magistrate would be more aware about intellectual property theft and its repercussions on the complainant. (A Magistrate, if satisfied, would direct the police authorities to register an FIR and investigate the matter, carry in raids).
  • However, it must be understood that a Magistrate’s court in India, where the criminal proceeding would eventually take place, is flooded with cases and thus any IP infringement matter is the least concern of the Court – your file might be sitting at the bottom of the stockpile. In practice, hiring an influential attorney could overcome this problem!
  • Opting for a criminal remedy means that you would have to be present in Court on all dates. This could be very burdensome!
  • At times there might be problem with police raids as well. Some people are sceptical in taking criminal recourse for obvious reasons of leakage of information. Raids reap the best results when carried out confidentially, thus, any leakage of information from any channel within the chain would essentially result in failure to catch the accused red-handed!

Therefore, what can be concluded from these considerations is that fact that criminal remedies ought not to be taken unless the pros outweigh the cons substantially according to the case.

Siddhant Sharma

Siddhant is currently enrolled in a six year law programme at one of India's premier private law schools, due to graduate in April, 2018. His journey as a techno-legal student started in year 2012 as a matter of fate than choice, but since then legal studies have embarked and impressed upon him the desire to pursue advocacy, in particular corporate and commercial litigation. Apart from academics, he has always been interested in, and still continue to be inclined towards, niche practice areas and entrepreneurial endeavours. He finds joy in writing about Patents.

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