Trademark protection does not stop at registration. Counterfeiting involves manufacturing or distributing cheap imitation products under someone else’s brand and trademark, and it remains a persistent problem in the Indian market.
Counterfeiting is not separately defined
The Trade Marks Act, 1999 does not explicitly define counterfeiting.
What it does provide is Section 102, which deals with falsifying and falsely applying trademarks. That provision corresponds to what is commonly understood as counterfeiting, and it is the statutory hook for criminal action.
Criminal remedies
Beyond the civil routes of infringement and passing off, a proprietor can pursue criminal action.
Sections 103 and 104 provide criminal penalties for applying false trademarks and for selling goods or services bearing them.
The penalty is imprisonment for a term not less than six months, extending to three years, and a fine not less than fifty thousand rupees, extending to two lakh rupees.
Trademark infringement of this kind is a cognizable offence, which means police can investigate and act without prior court sanction.
Why criminal action matters in counterfeiting cases
For ordinary trademark disputes between competing businesses, civil action is usually the right tool. For counterfeiting, criminal action often works better, for practical rather than doctrinal reasons.
Search and seizure. Criminal process enables raids on manufacturing and storage premises, which removes stock and equipment from circulation immediately.
Defendants worth suing. Counterfeiters frequently have no assets worth pursuing through a civil damages claim. A decree against an empty shell is not a remedy.
Deterrence. The prospect of imprisonment changes behaviour in a way that a damages award against an untraceable entity does not.
In serious matters, civil and criminal action run together, alongside customs recordal to catch imported goods at the border.
John Doe orders
Where infringers are numerous or unidentified, Indian courts grant John Doe orders, also called Ashok Kumar orders, against unnamed defendants.
These are widely used in piracy and counterfeiting matters, allowing enforcement action against parties who cannot be identified in advance. They are a significant practical tool where the counterfeiting operation is diffuse.
Building the case
Effective anti-counterfeiting work is largely investigative before it is legal.
Establishing the supply chain, identifying manufacturing and storage locations, obtaining sample purchases, and documenting the differences between genuine and counterfeit product all precede any filing. Weak groundwork produces raids that find nothing and orders that cannot be enforced.
Frequently asked questions
Is counterfeiting a criminal offence in India? Yes. Sections 103 and 104 of the Trade Marks Act provide for imprisonment of six months to three years and a fine of fifty thousand to two lakh rupees. It is a cognizable offence.
Should I pursue criminal or civil action? Often both. Criminal action provides search and seizure and real deterrence. Civil action provides injunctions and damages. In counterfeiting matters the criminal route is frequently the more effective lever.
Do I need a registered trademark? For the statutory criminal provisions and for customs recordal, yes. Registration is what makes the full range of remedies available.
What is a John Doe order? An order against unidentified defendants, used where infringers are many or unknown. Also called an Ashok Kumar order in India.
Can I stop counterfeits at the border? Yes, through customs recordal under the IPR (Imported Goods) Enforcement Rules, 2007, which covers imports rather than domestic manufacture.
How long does criminal action take? Criminal proceedings in India are not quick. The immediate value is usually in the raid and seizure rather than in the eventual conviction.
Useful official resources
- Trade Marks Act, 1999 — Sections 102, 103, 104
- Central Board of Indirect Taxes and Customs — for border enforcement
- IP India public search
Dealing with counterfeit product in the Indian market? Talk to us. The investigation usually matters more than the pleading.