Balancing Intellectual Property Enforcement: Lessons from Arun Kumar v. State of Punjab

3rd December, 2024 - 12:41 pm Categories: Legal Case 0 Comments

Neutral Citation No.: 2024:PHHC:155158

In Arun Kumar v State of Punjab, Justice Karamjit Singh of the Punjab and Haryana High Court highlights the problems with respect to the application of intellectual property rights in India. This case offers a differentiation between copyright laws and trademark law. This differentiation is important to apply the proper law and to interpret it accordingly. This case also deals with procedural flaws that exist in the implementation of the law.

Factual Background

In this case there were allegations against Arun Kumar, who was accused of manufacturing and selling garments under a counterfeit label of the popular brand Puma. Based on a complaint received from Puma, the police raided Arun Kumar’s premise where they found counterfeit goods and arrested him. An FIR was registered against him under Sections 63 and 65 of the Copyright Act, 1957. In the trial stage, the trial court further added charges under Sections 103 and 104 of the Trade Marks Act, 1999.

Arun Kumar filed a petition under section 482 of Code of Criminal procedure. He argued that copyright act didn’t apply in this case and the procedural requirements laid down in Trademarks act was not followed. Hence, he filed for quashing of FIR, the final report by the police and the trial court order.

Issues Before the Court

Two main issues before the court:

1. Whether the manufacture and sale of garments bearing a counterfeit label constituted a violation of the Copyright Act, 1957.
2. Whether the investigation and prosecution under the Trade Marks Act, 1999, complied with the procedural requirements mandated by law.

Analysis of Copyright Law

The main issue in this case is whether copyright law applies to counterfeit goods or not. Section 13 of the Act provides copyright protection only to specific types of works, such as literary, dramatic, musical, and artistic works, as well as films and sound recordings. The Court in this case held that simply making and selling garments does not come under these categories mentioned under section 13 unless the garments include original artistic elements, in which case they may qualify for copyright protection.

Copyright act in india is restrictive and this has been demonstrated by the Indian judiciary. In Time Warner Entertainment Co. v. RPG Netcom Globe[1], the High Court clarified that copyright protection cannot be granted over future works which are not explicitly covered under the statute. The Court held that Sections 13, 14, and 16 of the Copyright Act, when read together, make the legislature’s intent to keep it restrictive. Hence, no copyright claim can be made based on customary rights or practices not expressly outlined in the statute.

The rigidity of the statute has also been discussed in other cases as well. In Fortune Films International v Dev Anand[2] the Bombay High Court denied a claim brought by an actor seeking copyright protection over his performance in a movie, holding that copyright protection does not extend to areas that are not mentioned in section 13. Further, in Camlin (P) Ltd v National Pencil Industries[3], the Delhi High Court refused to grant copyright protection for an artist who painted on a carton, further strengthening the principle that copyright is limited to the categories mentioned in section 13.

Although this approach has been followed for a while, some scholars argue for a more expansive approach when dealing with copyright. They argue that it should be expanded as India is also part of the Berne convention which advocates for protection of creative works. Unfortunately, till the legislature decides to broaden the scope, the judiciary is bound by the law[4].

The judgment in Arun Kumar further confirms this principle that copyright law in India is not meant to serve as a one-size-fits-all solution for intellectual property disputes. The Court held that counterfeit goods with a logo fall under the trademark law, and not copyright law.

Analysis of Trademark Law

The second question revolves around the progressiveness of the inquiry and prosecution against the procedural requirements as stated under the Trade Marks Act, 1999. Section 115 of the Act gives specific guidelines to be followed under a trademark infringement case. Under this section, the investigation for the case is to be done by a police officer of a rank not below that of a Deputy Superintendent of Police (DSP). Further, the investigating officer is bound to seek the opinion of the Registrar of Trade Marks before carrying out the investigation.

In this case, the investigating officer did not seek the opinion of the registrar, hence violating the provision. This became the central point of challenge against the charges under Sections 103 and 104 of the Trade Marks Act. The Court favoured the petitioner by ruling that the failure to comply with the procedure mandated by law, the whole investigation was invalid and against the law.

Several cases have addressed this issue previously. In Shrenik Shantilal Dhadiwal v. The State of Maharashtra and Others[5], the Bombay High Court held that the police officer must obtain the Registrar’s opinion under section 115(4) before conducting search and seizure operations.

The Rajasthan High Court, in Pitambra Industries v. State of Madhya Pradesh[6], further held that the investigation held without the registrar’s permission was illegal. The Court held that the requirement to obtain the Registrar’s opinion is a sine qua non and any search and seizure under Sections 103, 104, and 105 of the Trade Marks Act have to follow proper procedure.  The said cases underscore that Section 115(4) is by no means an empty formality but rather a condition precedent to the otherwise condition of that section.

Certain cases, however, adopt a different stand on this subject. For instance, on the case State v. Sanjay Malhotra[7], held that a noncompliance with Registrar’s observation under Section 115(4) does not in itself vitiate proceedings unless the accused can show that he caused him substantial prejudice. This denotes a certain flexibility in that the provision would apply especially in cases where there is clear trademark infringement.

The implementation of Section 115(4) of the Trade Marks Act has faced significant challenges despite there being clear statutory requirements under the act. The Parliamentary Standing Committee in its report highlighted that delays in obtaining the Registrar’s opinion often slow down search and seizure operations which in turn gives the infringers time to relocate or dispose of the counterfeit goods. There exists a lack of set timeline for the Registrar to provide an opinion, which further stifles the process.

The Arun Kumar judgment brings back the focus on the importance of procedural safeguards under Section 115(4). However, it also highlights the difficulty of balancing the procedural requirement and the timely enforcement. This highlights the need for the legislature to bring about changes to deal with the challenges.

Judicial Approach to Balancing Interests

The rights of intellectual property owners on the one hand, and the procedural rights of accused persons, on the other hand, will have to be balanced in this judgment. While intellectual property rights are fundamentally meant to stimulate creativity and innovation, such rights should not be at the expense of fair procedure.

This is critical in counterfeit cases where large brands, on an aggressive enforcement drive against smaller ones, would commonly be found. Emphasizing the procedural compliance, the Court buttressed that enforcement of intellectual property must conform to law and do justice to the accused.

Implications of the Judgment

Understanding the nuances of judgment is essential. First, the verdict makes it clear about copyright versus the trademark law, leaving aside unnecessary duplication and misuse of the rights provisions. This is significant in order to not have overlapping claims and also malpractice with the provisions.

Secondly, the judgment also points to the need for compliance with the provisions prescribed by law. The court did so by quashing the complaint against Arun Kumar, thereby indicating the need for better compliance by the enforcement agencies. This may compel law enforcement agencies to comply better with the statutory requirements and thus lower the chances of misuse and ensure even enforcement of laws.

Finally, the decision emphasizes that the role of the judiciary involves scrutinizing intellectual property disputes carefully and giving protection to accused parties. The court’s intervention in Arun Kumar demonstrates the importance of judicial oversight in having actions of enforcement justified legally and proportionate. Such action would help enhance transparency and accountability in intellectual property enforcement for a more balanced and equitable legal system.

Conclusion

This judgment of Arun Kumar v. State of Punjab and Another has great significance as it clarifies as to how intellectual property rights should be interpreted and applied. Here, the Punjab and Haryana High Court defined not only the parameters of copyright and trademark protections, but also how procedural compliance should apply. In addition, it granted validity to principles of fairness and due process.

The role of the judiciary in the shaping of intellectual property law by values that society upholds in addition to the economic realities is also highlighted. This reminds one that the enforcement of intellectual property must be even and balanced. The principles laid down in this case are quite likely to serve as a guide in the future development of intellectual property jurisprudence in India.Top of Form

Author: G S Shrinithi, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

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[1] 2007 SCC OnLine Del 759.

[2] 1978 SCC OnLine Bom 156.

[3] 1985 SCC OnLine Del 378.

[4] Nishant Thakur and Sandra Varkey, ‘Closed List Approach versus Open-Ended Approach in Subject-Matter Copyright | SCC Times’ (SCC TIMES28 March 2021) <https://www.scconline.com/blog/post/2021/03/28/copyright-2/#_ftn28> accessed 2 December 2024.

[5] 2018 SCC OnLine Bom 1890.

[6]  2018 SCC OnLine MP 1191.

[7] FIR No. 81/09